Indian Trademark System is governed by Indian Trade Marks Act, 1999 (as amended) and Trade Marks Rules, 2017
An application for registration may be made by any person claiming to be the proprietor of a trade mark used or proposed to be used by him in respect of particular goods or services. In case of “proposed to be used application”, at the time of filing the application, the proprietor must have the intention to use the mark himself/herself or through a registered user.
Classification of goods and services for the purpose of registration of trademark in India is as per the current edition of “The international classification of goods and services (NICE Classification)”. It is possible to file a multi-class application as per Indian Trade Marks Act, 1999. However, it is advisable that separate applications must be filed for goods/services falling in different classes for the reason that in case of multi-class application even if an opposition is filed against one class, registration of the trade mark in other classes is held till the disposal of the opposition proceedings.
After examination of a trademark application, if the trade mark application is objected, an office action is issued within 1 to 2 months of filing of the application. Before carrying out substantial examination of the trademark application, a formality check is conducted by Indian Trade Mark Office wherein submission of documents and information such as power of attorney, priority document (if convention application) along with verified English translation, etc. is checked and the applicant is invited to remove formal objection within a prescribed time period.
After this substantial examination of the trademark application is conducted wherein the trademark is assessed for its distinctiveness under Section 9 of the Act as well as for its identity or deceptive similarity to prior existing marks under Section 11 of the Act.
Upon substantial examination, the Examiner issues an examination report along with the search report citing identical/similar marks, (if any) and the Applicant is required to submit reply to the examination report within 30 days from date of communication of the examination report. This deadline of 30 days is extendable by paying official fees.
Trade mark office supplies Applicant or Agent of the Applicant examination report and notices through email.
Upon filing a response to the Examination Report, in case Examiner is satisfied, mark is accepted/ advertised before acceptance. However, if the Examiner is not satisfied; a Hearing is appointed for final decision.
After hearing, in case of refusal of the trademark application, Applicant has an option of filing appeal in Intellectual Property Appellate Board.
After acceptance/advertisement before acceptance, the application is advertised in the weekly Trademarks Journal, and trademark application is open for an opposition by any third party, within a stipulated period of 4 months from the date of publication.
Once this period of 4 months of opposition expires or in case opposition is filed and decided in favour of the Applicant, trademark application proceeds for registration.
In case of convention application, date of filing of the priority application is the date of Registration.
The registration of trademark is initially valid for 10 years from the date of filing of the trademark application and can be renewed for each subsequent ten years period by paying renewal fee.
A valid registration confers upon the registered proprietor:
Trade Marks Act, 1999 provides for both civil and criminal remedies against infringement and passing off.
Infringement: A trademark is said to be infringed by a person, who, not being the registered proprietor or a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark.
Passing off is a common law tort used to enforce unregistered trademark rights. An action of passing off is intended to protect commercial goodwill and to ensure that business reputation are not exploited by deceit. In India, a combined civil action for infringement of trademark and passing off is permissible.
Trade Mark Act, 1999 makes it a criminal offence to falsify or falsely applying trade mark. Therefore, infringement and passing off of a trademark may also be a cognizable offence and criminal proceedings can be initiated against the culprit.
The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction (ex-parte injunction or injunction issued after notice to the opposite party), civil raid and seizures of goods, damages or account of profits, preservation of assets, delivery of the infringing goods for destruction.
In case of a criminal action for falsifying or falsely applying a trade mark, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than fifty thousand rupees (USD 750) but may extend to two lakh rupees (USD 3000).
For any specific query related to Trademarks law and procedure in India, please contact us at ip@avntltech.com