Registration of Trademarks
Registration of Trademarks in India governed by the Indian Trade Marks Act, 1999 & Indian Trade Marks Rules, 2002 (and amendments thereof). The Trademark Act & Trademark Rules seeks to provide for the registration of trademarks relating to goods and services in India. The rights granted under the Act, are operative in the whole of India.
What is Trademark?
A Trademark is a sign that is used to distinguish the goods and services of one party from those of others. A Trademark can be a letter, number, word, phrase, logo, graphic, shape, smell, sound or combination of these things.
What are the benefits of Registration of Trademarks in India?
A Trademark helps the consumers to identify and purchase a good or service because of its nature and quality, indicated by its unique Trademark, to meet their needs. By registering a Trademark, the owner of the Trademark protects the goodwill of the business. Hence, the Trademark contributes to the commercial value of the goods or services to which it is applied, and increases the marketability.
The registered owner of a Trademark receives the presumptive right of the Trademark owner to use the Trademark and can indicate it by using the Trademark symbol ™ or ® in relation of those goods and services for which the owner has registered the Trademark. The registered Trademark owner can stop other traders from using his Trademark unlawfully. The registered owner of a Trademark can sue other traders for recovery of profits, damages and costs in case of Trademark infringement. Trademark provides the guarantee for the unchanged quality and helps in creating and advertising the goods and services in public.
It serves as a constructive notice in general public about the ownership claim of the Trademark. Registration of Trademark in India can be used as a basis of registration of Trademark in other countries.
What marks are registrable in India?
All marks used in the trade are not registrable. The trademark law does not provide for the registration of all marks used in trade and business. Marks those satisfy certain requirements are only registrable. Therefore a mark which satisfies the prescribed requirements could be registered. Here it is very pertinent to know the requirements that a mark should satisfy for registration. The requirements that a mark should satisfy are as follows.
1. The mark should be capable of being represented graphically.
2. The mark should be capable of distinguishing the goods or services of one from those of others.
3. The mark must be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and services.
What marks are not registrable in India?
Certain trademarks are not registrable either in the public interest or due to the prohibition of such marks from registration in India under the statute for various reasons. The following marks are accordingly not registrable.
1. Mark that contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
2. Mark that comprises or contains scandalous or obscene matter;
3. Mark which has the nature as to deceive the public or cause confusion;
4. Mark prohibited under the Emblems and Name (prevention of Improper use) Act, 1950;
5. Mark consisting exclusively the shape of goods which results from the nature of the goods themselves;
6. Mark containing the shape of goods which is necessary to obtain a technical result or the shape, which gives substantial value to the goods.
What are the grounds for refusal of Trademarks in India?
According to the trademarks law grounds for refusal for the registration of Trademark in India can be divided into two headings as absolute grounds and relative grounds. The following grounds are considered as grounds for the refusal of the registration of a mark in India.
Absolute grounds for refusal of Trademark registration in India are:
1. Marks devoid of any distinctive character or not capable of distinguishing the goods or services of one person from those of others.
2. Marks which indicates quality or other descriptive character of the goods or services.
3. Marks which have become customary in the current language or in the bona fide or established practice of the trade.
4. Marks to the trade or generic names or marks common, chemical names and international non-proprietary names.
5. Marks likely deceive public or cause confusion.
6. Marks comprising scandalous or obscene matter or likely to hurt religious susceptibilities of any class or section of the citizens in India.
7. Marks prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.
8. Marks shape of which results from the nature of the goods themselves.
9. Marks the shape of which is necessary to obtain a technical result.
10. Marks the shape of which gives substantial value of the goods.
Relative grounds for refusal of Trademark registration in India are:
1. Marks which are identical or similar to an earlier Trademark and the respective goods or services are identical or similar.
2. Mark which are identical or similar to an earlier Trademark, but the goods or services are not similar. The question of refusal of registration of a mark similar to an earlier Trademark where the goods are different can be considered only in opposition proceedings.
3. Marks under passing off or law of copyright.