A Trademark is a logo, which is utilized by a producer to recognize his labor
and products from different makers. The logo might be as a letter, word, number,
image or plan. Words and pictures are the most widely recognized types of brand
name, however other extraordinary signs can be enrolled, inasmuch as they are
fit for being addressed graphically. For instance, plans that have effectively
been safeguarded as brand names (for example the Coca-Cola bottle).
The commercial center is packed and recognizing business among competitors is
hard. Trademarks are an essential reprieve, as they assist clients with finding
their #1 brands. At the point when clients see a brand name they quickly know
whom they are dispensing with, the standing of the business and are less
inclined to search for choices.
Importance of Trade Mark
According to the monetary perspective, an exchange mark is only an image that
permits a buyer to recognize products or administration that have been palatable
before and recognize the merchandise or administration that have neglected to
give fulfillment. Exchange marks carry out two significant market roles:
They encourage the production of quality products and they reduce customer's
cost of shopping and making purchase decisions.
A significant reason hidden exchange mark regulation is the assurance of the
exchange mark proprietor's venture the nature of the imprint and the nature of
the merchandise or administration, which the imprint distinguishes. A specific
measure of picture separation likewise assists purchasers with choosing results
of top notch and dependability.
A trade mark is species of advertising, its purpose being to fix the identity of
the product and the name of the producer in the minds of the people, who see the
advertisement for marketing decisions.
- Trademark search:
Prior to petitioning for Trademark enrollment, an intensive Trademark search is critical. A Trademark
search would make the producer mindful of his imprint's legitimacy. One can look through on IP India
- Filing a Trademark application:
After one gets ensured that one's chosen brand name is not listed in the Trademark Registry of India, one
can move forward to the next step, i.e. filing a trademark application for getting it registered. One
needs to file a trademark application at the Trademark Registry of India.The enlistment application is Structure TM-A, which can be either documented internet based through the
authority IP India site, or at any of the five Trademark Registry Offices.
Once your application is submitted, you will receive an official receipt for immediate use, and within
24-48 hours, you will receive a trademark application allocation number.
Trademark Application Fees:
- If the applicant is an individual/startup/small enterprise: Rs 5000 (physical filing) and Rs 4,500
- In all other cases (Note: Fee is for each class and for each mark): Rs 10,000 (Physical filing) and
Rs 9,000 (E filing)
- Examination of Trademark Application:
After a trademark application is filed, it is examined by the examiner if there are any issues.The examination might take around 12-18 months. The examiner may accept the trademark in its entirety,
conditionally, or with objections. The trade mark shall be made available in the Trademark Journal if an
application is accepted without preconditions.
In the event of a conditional acceptance or objection, 30 days are given to fulfill the conditions.
Once such a response is accepted, the trademark is published, and if the response is not accepted, the
applicant could request a hearing.
The certain conditions that need to be fulfilled are:
- The name, ethnicity, and address of the candidate are vital. Assuming there is any kind of
organization, subtleties of each and every accomplice should be submitted with referencing any
minor, if present.
- One must also provide information about the products and services associated with the registration.
- A soft copy of the trademark came for registration.
- Translation of all the non-English words is required.
- Date of the initial use of the trademark.
- If the application submitted is to claim authority for an earlier-filed application, details of that
application are also required.
Once the application has been accepted, it is published in the Trademark Journal for a period of 4
To invite anyone who objects the registration of trademark and given
the opportunities to oppose.
Trademark journal is available on Registry's website and gets update every week.
Trade Mark Prosecution
After publication, it is open to opposition for a period of 4 months. In this
manner, any individual, who considers the imprint to need at least one
fundamental qualities that are expected for trademark registration could file
Rules provide for a detailed law and procedure in respect of opposition
proceedings and must be kept in mind while dealing with such proceedings. If
learned registrar raises an objection and the applicant is not able to satisfy
the objection the mark will not be able to satisfy the objection the mark will
not be advertised, it will be refused. 30 days are given to satisfy the
- Section 9 (1): prohibits trademarks without distinctive character, solely representing goods, services, values, or customs in the current language.
- Section 9(2): prohibits trademark registration if it deceives the public, hurts religious susceptibilities, is scandalous, or is prohibited under the Act.
- Section 9(3): Trademark registration denied for goods mark with shape derived from nature, technical necessity, or substantial value.
- Section 11: Relative grounds for refusal of registration
- Section 11: addresses refusal of trademark registration based on similarity or public confusion, and opposition from unregistered or well-known opponents on passing off grounds.
- Section 11 (1): The trade mark's identity and similarity to an earlier mark may cause confusion among the public, including association with the earlier mark.
- Section 11 (2): A trade mark which:(a) is identical with or similar to an earlier trade mark; and (b) Registrable goods or services must not be registered if the earlier trade mark is well-known and unjustly used.
- Section 11 (3): Trademark registration in India is prohibited if use is prevented by law, specifically passing off protection, or copyright law.
Section 9 : Absolute Ground for Refusal of Registration
Section 9 (1) prohibits trademarks without distinctive character, solely
representing goods, services, values, or customs in the current language.
Section 9(2) prohibits trademark registration if it deceives the public, hurts
religious susceptibilities, is scandalous, or is prohibited under the Act.
Section 9(3) Trademark registration denied for goods mark with shape derived
from nature, technical necessity, or substantial value.
Section 11 : Relative grounds for refusal of registration
Section 11 addresses refusal of trademark registration based on similarity or
public confusion, and opposition from unregistered or well-known opponents on
passing off grounds.
Section 11 (1): The trade mark's identity and similarity to an earlier mark may
cause confusion among the public, including association with the earlier mark.
Section 11 (2): A trade mark which:(a) is identical with or similar to an
earlier trade mark; and (b) Registrable goods or services must not be registered
if the earlier trade mark is well-known and unjustly used.
Section 11 (3): Trademark registration in India is prohibited if use is
prevented by law, specifically passing off protection, or copyright law.
Section 21 (1): Opposition to registration
Any individual may, in four months from the date of the commercial or re-ad of
an application for registration, give notice in writing in the endorsed way and
on the installment of such fee as might be endorsed, to the Registrar, of
opposition to the registration.
Rule 42: Notice of Opposition
A Notice of Objection to the Registration of a Trademark pursuant to Section
21(1) shall be submitted in Form TM-O, with the information required by Rule 43,
within four months from the date of publication of the trademark journal in
which the application for registration of the trademark was advertised and
If a Notice of opposition is filed for a single application to register a
trademark for a class of goods or services, he or she shall pay the fee for each
class in which the opposition was filed.
Section 21 (2)
The registrar shall serve the application for registration with a copy. Within
two months of the receipt of such a copy, the applicant must submit a
counterstatement to the registrar in the prescribed format. If the applicant
fails to do so, they are deemed to have withdrawn their application.
Section 21 (3)
If the applicant submits such a counter-statement, a copy of it shall be served
on the person lodging the notice of opposition.
Rule 44: Counterstatement
Under section 21(2) of the Rules of Procedure, a counterstatement must be served
on the opponent within a period of two months following the date on which the
applicant receives a copy of the Notice of Objection from the Registrar. The
counterstatement must specify which facts, where applicable, are accepted by the
applicant in response to the notice of Objection. In most cases, the opponent
will receive a copy of this counterstatement within two months of the date on
which it is received.
Section 21 (4)
Section 21(2) provides that a counterstatement is to be served on the opposing
party within two months of receipt of a copy of a Notice of Objection by the
Registrar. A counterstatement must state which facts, if any, the opposing party
accepts in response to the Notice. In the vast majority of cases, the opposing
party will be served with a copy of the counterstatement within the two-month
period following receipt.
Rule 45: Evidence in support of opposition
The opponent must provide evidence supporting their opposition within two months
of receiving a counterstatement. They can leave affidavits or inform the
Registrar and applicant in writing that they will rely on the facts in the
notice of opposition. The opponent must deliver any evidence, including
exhibits, to the applicant and inform the Registrar in writing or it will be
Rule 46: Evidence in support of application
The applicant must provide affidavits supporting their application within two
months of receiving opposition affidavits or intimation that the opponent does
not want to adduce any evidence. They must either deliver copies or inform the
Registrar that they will rely on counterstatements and existing evidence. If the
applicant adds or relies on existing evidence, they must deliver copies,
including exhibits, to the opponent and inform the Registrar in writing.
Section 21 (5)
Once the parties have been heard (if necessary) and the evidence has been
considered, the Registrar will decide whether, and under what conditions or
restrictions, the registration should be approved, and may consider a ground of
opposition whether or not raised by the opposing party.
Rule 47: Evidence in reply by opponent
Within 30 days of receiving copies of the affidavit from the opponent, the
opponent may submit evidence to the registrar by affidavit in response to the
affidavit and submit copies of the affidavit and supporting documents to the
applicant, and notify the registrar in writing.
Rule 50: Hearing and decision
Once the evidence filing phase is completed, the Registrar will issue a Notice
of Hearing stating the date for the hearing, which must be no later than one
month following the date for the first Notice of Hearing.
The hearing will be based on the Notice of opposition, the counter-statement and
the evidence filed. The parties must notify the Registrar that they intend to
appear at the hearing. Adjournment of the Hearing the hearing can be adjourned
at any time. You can request an adjournment of the hearing under the request for
information form (FORM TM :M) at least three days in advance. You are only
allowed to request an adjournment twice. The matter will be heard by the
registrant and the matter will be decided on the merits. If a party does not
appear at the hearing, the registrant will decide against their favour.
In Gujarat Medicraft Pvt. Ltd. vs Cipla Ltd
. on 31 January, 2006 -
However, it was evident that the "evidence in supporting of application" and
"evidence in reply" provisions must be used with the same vigor and vigor as in
the case of Article 50(1), meaning that the applicant or, in this case, the
opposing party cannot ask for an extension of more than 30 days.
Written By: Mahek Hitesh Shah
, Fourth Year Law Student Of BA.LLB, GLS Law
College, Ahmedabad, Gujarat.