Introduction to Trademark Registration process in India

Trademark Registration is an important thing while you are doing your business. It provides uniqueness of your own trade name and protect from others using it. Trademark registration gives you a exclusive right on your own trade name. We are the leading corporate service provider and will provide you a free trademark search. With the transfer of some of the provisions contained in existing section 11 of the trade and Merchandise Marks Act, 1958, to sub-clause(2) of clause 9, clause 11 has been recast on the lines of sub-section (1) of section 12 of the existing Act making the grounds of refusal more specific and explicit so as to provide that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trademark or similarity of goods or services, the trademark shall not be registered. It is proposed that the registration of a mark is merely n or imitation of well-known mark should not be allowed. Accordingly, sub-clause (2) seeks to provide that where the goods or services are not similar and the use of trademark identical with or similar to an earlier trademark without due cases would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark, shall not be registered. Sub-clause (3) lays down that a trademark shall not be registered, if or to the extent that, its use will be prevented by law of passing off or under the law of copyright. However, sub-clause (4) permits registration where the proprietor consents to such trademark registration. The explanation proposed in this section defines the term “earlier trademark” to mean (a) a registered trademark or a convention application (clause 154) which has a date of application earlier than the trademark in question, or (b) a trademark, which on the date of application or on the date of priority claimed is entitled to protection as a well-known trademark. Sub-clause (5) lays down that the trademark shall not be refused registration on the ground specified in sub-clause(2) and (3) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trademark. This will put the burden of proof in this respect the opponent opposing the registration on the grounds specified therein. Sub-clause (6) lays down the factors which the Registrar shall take into account in determining whether a trademark is a well-known trademark or not. Sub- clause (6) lays down the factors which the Registrar shall take into account in determining whether a trademark is a well-known trademark or not. Sub-clause (7) lays down the facts to be taken into account to determine whether a trademark is known or recognized to the relevant section of the public. Sub-clause (8) provides that a trademark needs to be well known in at least one relevant section of the public. Sub-clause (9) lays down the factors that shall be excluded in determining whether a opposition proceeding the Registrar shall protect the well-known trademark against identical or similar trademarks and take into consideration the bad faith of either the applicant or the opponent affecting the rights relating to the trademark. Sub-clause (11) protects prior use or registration in good faith of an identical or similar trademark against a well-known trademark.

Trademarks (Amendment) Act, 2010

By trademarks (Amendment) Act, 2010 (40 of 2010), the definition of “earlier trademark” contained in clause (a) of sub-section (4) of section 11 has been revised and enlarged to include ‘a registered trademark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E” apart from a convention application referred in section 154 which has an earlier filing or priority date. The expanded scope would cover international registrations of earlier date, when India accedes to the Madrid Protocol. Further, it removes ambiguity that the term will include not only the registered trademark, but also a pending application already made bearing an earlier date of filing.

Comments-with the transfer of some of the provisions contained in section 11 of the 1958 Act to Section 9 of the current enactment, this section has been recast to lay down the relative grounds for refusal of registration. This section has been made rather longish, with as many as 11 sub-sections and provides for grounds of refusal on the basis of conflicting prior registrations and third party rights. Section 11 (!), starts with the phrase “Save as provided in section 12, a trademark shall not be registered…”. Section 12 provides for registration in the case of honest concurrent user or of other special circumstances by more than one proprietor of marks, which though are identical or similar. Section 12 is thus an exception to Section 11. While section 9 provides for absolute grounds for refusal of an application for registration of trademark, section 11 provides for relative grounds, that is to say on the ground .of any conflict with other trademarks.

Search procedure

The search for identical or similar mark is confined to a particular class, in which registration is applied for. The international classification of Goods and Services for registration trademarks has divided the classification of goods and services in to 45 classes – the goods being classified in classes 1 to 34 and services included in classes 35 to 45. The search by the examiner would thus cover classes which include not only identical goods but also similar goods.

The Fourth Schedule in the Trademarks Rules, 2002, which did not contain exhaustive classification of goods, was not of much practical use, but created difficulty for courts in interpreting scope of registration, has been omitted. Notification  No. GSR 21(E) dated 1th January, 2013. It is mandatory under the Act to follow the international classification of goods and services published by the WIPO, known as NICE classification. Under amended rule 20(2) of Trademarks Rules, 2017, based on international classification, the Registrar will publish a class wise and alphabetical index of such goods and services, including goods and services and for full disclosure of the content of international classification, the applicant may refer to the alphabetical index of goods and services published by the Registrar or the current edition of the international classification of goods and services published by the WIPO. Further, it is also an established law that the classification of goods or services is not the criterion for deciding the question whether two sets of goods and services are of the same description and that the question has to be determined by taking into account several factors. Indeed, goods comprised in the same class includes goods of a different descriptions of goods fall in the same class, The search may thus extend to the class in which the goods and services fall and where necessary, cross search in related other classes.

Applicant’s specification of gods or services should be precise

In his own interest the applicant should be precise in stating the specification of goods and services for which the mark is sought to be registered. If the applicant seeks registration in respect of unnecessarily a wide specification of goods in a class, there may be found a prior registration by another person of the same or similar mark in that class giving rise to an objection to the application, unless the applicant offers to exclude from his specification the named goods of the prior registration. Further the Registrar may object to a wide specification of goods under rule 23(5) of the 2017 Rules. Rule 25(2) of the 2017 Rules also provides where an application contains a statement of user, the applicant shall file an affidavit testifying to such user along with supporting documents, including exhibits showing the marks as used. When the applicant seeks registration in respect of certain specified goods and is barred by a conflicting registration extending, say to the whole class, the application will be permitted to proceed if the prior registrant voluntarily cancels from his specification of goods the specified articles of the applicant’s specification and goods of the same description. The practice of the Registrar to allow registration by agreement constitutes “a practical method of copying with the provisions of section 12(1) (section 11 of the 1999 Act) of the Act, which are designed for the dual purpose of obviating deception of the public and of affording protection to traders’ interests. As may be seen in the above case, indefiniteness in the specification of goods may be a bar to the registration of the applicant’s mark. In this case, the application was for registration of the applicant’s mark. In this case, the application was for trademark registration of a particular mark in respect of “complete articles of clothing, but not including footwear, stockings, stocks or hats, and not including any goods of the same description as any of these excluded goods”. Application was refused on the ground of indefiniteness of specification of goods. The Registrar may require, wherever necessary, the applicant to clarify the goods or services in relation to which the mark is proposed to be registered and accordingly seek any additional information or documents to be furnished. The Registrar may also take into account any advertisement or publication relating to the mark, in which the Registrar took into account the descriptive use of the mark. In order to search for similar goods or services, the Registry has established a system of cross search in other relevant classes also. For example clothing falls in class 25, but special clothing such as protective clothing, comes in class 9.

Importance of Specification of goods or services in the context of changed law of infringement

In this context, the change in law in the matter of infringement of trademarks is to be borne in mind by the applicant in formulating the specification of goods or services and by the Registrar in allowing the same for registration of trademarks. Under section 29 of the 1958 Act, infringement is the unauthorized use by the defendant, for trading purposes in relation to any of the goods for which the plaintiff’s mark is registered, of a mark which is identical with or deceptively similar to the plaintiff’s registered mark and the use complained of is ‘use as a trademark’. However, under the present Act of 1999, a registered trademark is infringed not only by use in the above circumstances, but also when used on similar or dissimilar goods or services. Further the law enacts that there is a statutory presumption of confusion on the part of the public, when the infringing use is on identical goods or services. The specification of goo ds or services should thus be more precise and be limited to the actual goods or services in relation to which the mark is used or proposed to be used and should not be unduly vague or large. Stricter scrutiny by the Registrar becomes an important component of examination procedure, particularly the enforcement of the rule 23(5) of the 2017 Rules.

Search for similarity of marks

While search for identical marks presents no difficulty, decision as to whether the marks are similar involves close application of mind. The examiner is aided by necessary searching program on the computer system. All marks thrown up by the computer need not, however, necessarily be considered similar and for this purpose the examiner has to scrutinize the list and apply his own mind and skill, having regard to the established practice of the Registry.

In Section 11(1) of Trademarks Act, 1999 represents that “a trademark shall not be registered if, because of-

• Its identity with an earlier trademark and similar services covered by the trademark; or
• Its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark,

For the above case, represents that the likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark”. Section 11(1) though worded differently, could be said to broadly correspond to section 12(1) of the former 1958 Act. This is a prohibit provision, which enables the Registrar to refuse an application at the examination stage. The questions to be considered are-

• Is the proposed mark identical with an earlier trademark and the goods and services for which registration is sought are similar to those covered by the earlier mark; or
• Is the proposed mark similar to an earlier trademark and the goods or services for which registration is sought are identical or similar to those covered by the earlier mark.
• Consequently, does there exists a likelihood of confusion on the part of the public search, which includes the likelihood of association with the earlier trademark.

The cases in which objections may arise are, where-

• Rival marks (namely proposed mark and the earlier mark) are identical and the goods or services covered by them are also identical;
• Rival marks are identical, but goods or services covered by them are not identical but similar;
• Rival marks are not identical but similar and the goods or services covered by them are either identical or similar; and by the reason of the above, there exists a likelihood of association with the earlier trademark.

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