PROCEDURE OF DOMESTIC FILING OF TRADEMARK IN INDIA

(Project Report)

Submitted to

Mr. Atul S. Jaybhaye

(Faculty, IPR)

Submitted by

Raman Choubey
(Sem – X; Sec- ‘C’; Roll no. 125)

Date of Submission - 8th April, 2019

HIDAYATULLAH NATIONAL LAW UNIVERSITY

Atal Nagar, District – Raipur 492002 (C.G.)

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 Acknowledgement

I would like to take this opportunity to express my deep sense of gratitude towards my course
teacher, Mr. Atul S Jaybhaye, for giving me constant guidance and encouragement throughout the
course of the project.

I would also like to thank the University for providing me the internet and library facilities which
were indispensable for getting relevant content on the subject, as well as subscriptions to online
databases and journals, which were instrumental in writing relevant text.

Special thanks goes out to my seniors who have been relentless in their help and supporting
providing any material whenever required and my colleagues, who always stood by me, irrespective
of the decisions taken by me. Without their support this project would not have seen the light of the
day.

Raman Choubey
Sem X
Roll No 125

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 Table of Contents
Acknowledgement................................................................................................................................2
INTRODUCTION................................................................................................................................4
TRADEMARK : ORIGIN AND HISTORY........................................................................................5
REGISTRATION OF TRADEMARK.................................................................................................7
TRADEMARK SEARCH :-............................................................................................................7
TRADEMARK CLASSIFICATION...............................................................................................7
ADVANTAGES OF REGISTERING A TRADEMARK................................................................8
DOMESTIC FILING OF TRADEMARKS IN INDIA.......................................................................9
REQUIREMENTS...........................................................................................................................9
FILING OF TRADEMARK IN INDIA:- BRIEF OF THE PROCESS INVOLVED...................10
CONCLUSION.................................................................................................................................13
REFRENCES.....................................................................................................................................14

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Page No. 4
 INTRODUCTION

A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which

identifies products or services of a particular source from those of others, although trademarks used
to identify services are usually called service marks. The trademark owner can be an individual,
business organization, or any legal entity. A trademark may be located on a package, a label, a
voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed
on company buildings.

The first legislative act concerning trademarks was passed in 1266 under the reign of Henry III,
requiring all bakers to use a distinctive mark for the bread they sold. The first modern trademark
laws emerged in the late 19th century. In France the first comprehensive trademark system in the
world was passed into law in 1857. The Trade Marks Act 1938 of the United Kingdom changed the
system, permitting registration based on "intent-to-use”, creating an examination based process, and
creating an application publication system. The 1938 Act, which served as a model for similar
legislation elsewhere, contained other novel concepts such as "associated trademarks", a consent to
use system, a defensive mark system, and non claiming right system.

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 TRADEMARK : ORIGIN AND HISTORY

A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of
these elements. There is also a range of non-conventional trademarks comprising marks which do
not fall into these standard categories, such as those based on colour, smell, or sound (like jingles).
Trademarks which are considered offensive are often rejected according to a nation's trademark law.

The term trademark is also used informally to refer to any distinguishing attribute by which an
individual is readily identified, such as the well-known characteristics of celebrities. When a
trademark is used in relation to services rather than products, it may sometimes be called a service
mark, particularly in the United States.

A trademark identifies the brand owner of a particular product or service. Trademarks can be used
by others under licensing agreements; for example, Bullyland obtained a license to produce Smurf
figurines; the Lego Group purchased a license from Lucasfilm in order to be allowed to launch
Lego Star Wars; TT Toys Toys is a manufacturer of licensed ride-on replica cars for children. The
unauthorized usage of trademarks by producing and trading counterfeit consumer goods is known
as brand piracy.

The owner of a trademark may pursue legal action against trademark infringement. Most countries
require formal registration of a trademark as a precondition for pursuing this type of action. The
United States, Canada and other countries also recognize common law trademark rights, which
means action can be taken to protect an unregistered trademark if it is in use. Still, common law
trademarks offer the holder, in general, less legal protection than registered trademarks.

HISTORY OF REGISTERED TRADEMARKS

In trademark treatises it is usually reported that blacksmiths who made swords in the Roman
Empire are thought of as being the first users of trademarks. Other notable trademarks that have
been used for a long time include Löwenbräu, which claims use of its lion mark since 1383. The
first trademark legislation was passed by the Parliament of England under the reign of King Henry
III in 1266, which required all bakers to use a distinctive mark for the bread they sold.1

1 Packard, Ashley (2010). Digital Media Law. John Wiley and Sons. p. 162.

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The first modern trademark laws emerged in the late 19th century. In France the first comprehensive
trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark
Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offence to imitate another's
trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks
Registration Act was passed which allowed formal registration of trade marks at the UK Patent
Office for the first time. Registration was considered to comprise prima facie evidence of
ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act
defined a registrable trade mark as 'a device, or mark, or name of an individual or firm printed in
some particular and distinctive manner; or a written signature or copy of a written signature of an
individual or firm; or a distinctive label or ticket'.2

In the United States, Congress first attempted to establish a federal trademark regime in 1870. This
statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme
Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881,
Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress
revised the Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with
several amendments, as the primary federal law on trademarks.3

The Trade Marks Act 1938 in the United Kingdom set up the first registration system based on the
“intent-to-use” principle. The Act also established an application publishing procedure and
expanded the rights of the trademark holder to include the barring of trademark use even in cases
where confusion remained unlikely. This Act served as a model for similar legislation elsewhere.4

2 Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark
(1860-80)
3 Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds Actual Confusion is Not a
Prerequisite, 77 Mo. L. Rev. (2012)
4 World Intellectual Property Organization (1997). Introduction to Intellectual Property: Theory and Practice. Kluwer
Law International. p. 23.

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 REGISTRATION OF TRADEMARK

TRADEMARK SEARCH :-

The trademark search is the most important step in the process of selecting a new mark. Since
rademark rights are granted on a first come basis, it is important to determine whether anyone else
has prior rights in the same or similar mark. If you do not do a comprehensive search, you run the
risk of infringing someone's mark. In addition to defending an unnecessary lawsuit, you may be
required to change your mark, destroy your inventory, or pay significant licensing fees.

A comprehensive trademark search includes a search of state and federal trademark applications and
registrations, common law uses, including business directories, company names, and domain
names. Ideally, a trademark search should be done by a professional search firm close to the time
you plan to adopt the mark. However, you can rule out certain marks by conducting a "knock-out"
or "screening" search. You can do this yourself using, for example, trade directories and the
Internet.
An assessment of whether a mark is confusingly similar is best done by a trademark attorney who
can decode the results of your search. Bear in mind that "clearing" a corporate name with the
secretary of state is not the same thing as determining its availability for commercial use. Moreover,
relying on the records of the United States Patent and Trademark Office alone is not enough, since
trademarks arise out of use and may not be federally registered. Assuming the mark is available and
there are no potentially conflicting marks, you can register it on the federal or state level, or use it
without registration.

TRADEMARK CLASSIFICATION
Trademark in India is classified in about 42 different classes, which includes chemical substances
used in industry, paints, lubricants machine and machine tools, medical and surgical instruments,
stationary, lather, household, furniture, textiles, games, beverages preparatory material, building
material, sanitary material, and hand tools, other scientific and educational products.5 These classes
again are further sub-divided. The main objective of trademark classification is to group together

5 Www.upsto.gov.in/?./trade+mark/classification/list

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the similar nature of goods and services. Out of these 42 classes few are for product and other for
services.

ADVANTAGES OF REGISTERING A TRADEMARK

There are many advantages of registering a trademark. Some of them are:-

• Trademarks make it easier for your customer base to find you: Trademarks distinguish
your services and products from those of your competitors. This identifies you as the source
and indicates a consistent level of quality of your services and products. Trademarks also
increase brand awareness and goodwill.
• Trademarks help prevent marketplace confusion: Trademarks prevent confusion as to the
source of the goods and services.
• Trademarks are economically efficient tools: Trademarks create a face value in the market
among competitors. Furthermore, they give your business a monopoly over the brand name.

Trademark registration has many benefits once your brand gains attraction. The little effort of yours
will preserve a trademark for generation and develop a unique identity, that associates the people
with the specific brand. It gives you the ability to establish your right to the trademarked word,
logo, and sound, graphic or an even color combination. It protects your “mark” by preventing
similar names from being registered by other businesses operating in the space. It is an intangible
asset to the business and builds the confidence of investor on the company.

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 DOMESTIC FILING OF TRADEMARKS IN INDIA

REQUIREMENTS

In India definition of mark includes shape of goods and therefore now the three dimensional or 3-
Dimensional or 3D Marks could be registered under the provisions of Indian Trademark Act, 1999.
The manner in which same has to be provided while filing the trademark application is provided6,
which states as under:

Rule 29: Additional Representation:

(1).......
(2)........
(3) Where the application contains a statement to the effect that the trade mark is a three
dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or
photographic reproduction as follows, namely:-
(i) The reproduction furnished shall consist of three different view of the trade mark;
(ii) Where, however, the Registrar considers that the reproduction of the mark furnished by
the applicants does not sufficiently show the particulars of the three dimensional mark, he
may call upon the applicant to furnish within two months up to five further different view of
the mark and a description by words of the mark;
iii) Where the Registrar considers the different view and/or description of the mark referred
to in clause (ii) still do not sufficiently show the particulars of the three dimensional mark,
he may call upon the applicant to furnish a specimen of the trade mark.

Further three dimensional marks have also been defined under the revised draft manual dated
January 23, 2009.
In the case of three dimensional mark, the reproduction of the mark shall consist of a two
dimensional or photographic reproduction.
Where appropriate, the applicant must state in the application form that the application is for a
shape trade mark. Where the trade mark application contains a statement to the effect that it is a

6 Under subrule (3) of Rule 29 of Trademark Rule

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three dimensional mark, the requirement of Rule 29(3) will have to be complied with.
Further a single multiclass application can be filed in India in respect of all the international classes.

FILING OF TRADEMARK IN INDIA:- BRIEF OF THE PROCESS INVOLVED

In India trademark applications are filed on the basis of statutory provisions and Rules embodied in
(a) The Trademark Act, 1999 and (b) Trademark Rules, 2002. In accordance to the Act and Rules a
trademark application is to be filed with the Trademark Registry in the prescribed format alongwith
the prescribed fees.

Preliminary Aspects to be considered while applying for a trademark in India

1. Who can file a trademark in India?

Any person or an entity which claims to be proprietor of a trademark can file a trademark
application in respect of desired specification of goods or services.

2. Trademark Search and selection of a distinctive mark

Prior to filing an application, it is very necessary to select a good trademark i.e. a mark
which would not attract objections in future. Preliminary Trademark Search will determine
similar or deceptively similar marks already in the Trademark Register.

Additionally, while selecting a trademark it must be taken into consideration that the mark
does not:

• Deceive the public or cause confusion;

• Hurt the religious susceptibilities of any class or section of the citizens of India;

• Comprise of any scandalous or obscene matter;

• Attract objections under the Emblems and Names (Prevention of Improper Use)
Act, 1950;

• Have any negative connotation in India;

If the proposed trademark is a foreign word, then it must be translated into English to
ascertain its distinctiveness i.e. its translation in English shall not render a descriptive
meaning.

3. State of Jurisdiction of the mark

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 While applying for the Trademark, a proprietor has to provide the trademark’s State of
Jurisdiction. In case of Indian Applicants, the State of Jurisdiction/ appropriate office will be
the place under whose jurisdiction the Applicant’s principal place of business falls. In case
of Foreign Applicant’s the State of Jurisdiction/ appropriate office will be the place within
whose jurisdiction the Applicant’s agent/ attorney is situated. The various States of
Jurisdiction in India are i.e. New Delhi, West Bengal, Tamil Nadu, Maharashtra and Gujrat

4. Particulars to be mentioned while filing an application

• Name, address and nationality of the proprietor;

• Party Type i.e. proprietorship, partnership, individual, HUF, body incorporated;

• Trademark to be applied for i.e. wordmark, device mark, label, composite mark etc.

• Language of the mark;

• Translation or Transliteration of the trademark (if any);

• Class of goods or services in respect of which the trademark is to be filed;

• Specification of goods or services in respect of which the trademark is to be filed;

• User detail of the trademark i.e. Proposed to be used or used since date;

• State of Jurisdiction of the trademark/ appropriate office;

• Address of service details;

• Condition or Disclaimer with the mark (if any);

• Associated trademark (if any);

• In case the application is a priority/ conventional application then priority details of the
trademark;

5. Documents to be filed

• Power of Attorney (Form TM- 48)- It is not mandatory to submit the Power of Attorney at
the time of filing application. However, the duly notarized Power of Attorney is to be filed
within two months from the date of filing of the application.

Comprehensive e-filing of Trademark:

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 The Indian Trademark Registry has recently introduced the service of comprehensive e-
filing of trademarks, which enable online filing of trademarks and facilitates the entry of
aforesaid particulars alongwith the uploading of requisite documents online.

6 Who can apply for a Trademark Registration ?

A person who claims to be the proprietor of the trademark can apply for the registration of
its mark in respect to goods/services. It should be filed at the appropriate office or trademark
office under whose jurisdiction the principal place of the business of the applicant in India
falls. In case, the applicant is doing the business outside India, then the application can be
filed in the trademark office under whose jurisdiction the office of the agent is situated.

After filing the application, the same is then examined by the Registry, as to its inherent
registrability and/or any similarity with existing marks. If any objection is raised, an official
examination report will be issued by Registry. To overcome the objection, it is necessary to
file a response to examination report along with the supporting documents showing the
marks as used.

If, following examination, the trademark application is considered allowable, acceptance

order is issued, and thereafter the trademark is published in the trademarks Journal. If there
are no oppositions filed within 4 months from the date of advertisement in the Trademarks
Journal, then the trademark registration certificate is issued.

Trademark registration is a long process and it takes around 18-24 months to obtain
registration in case no opposition is filed by a third party.

7. Duration of Registration

Once the trademark is registered, it is valid for a period of 10 years from the date of
application. The registration can then be renewed for a further period of ten years from the
date of expiration of registration or of the last renewal of the registration.

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 CONCLUSION

Trademark registration process in India is required if a company/individual intend to possess the

complete ownership of the mark and intend to protect it from the misuse by the third party.
Trademark registration gives legal right to take appropriate action against the third party against
an infringement of the trademark. Registering a trademark gives the owner exclusive right to use it
for its products and/or services. If the trademark registration process is followed smoothly, then the
owner can use the symbol that indicates that specific trademark is registered. The symbol indicates
trademarks registration in India application is filed.

Trademark registration has many benefits once your brand gains attraction. The little effort of yours
will preserve a trademark for generation and develop a unique identity, that associates the people
with the specific brand. It gives you the ability to establish your right to the trademarked word,
logo, and sound, graphic or an even color combination. It protects your “mark” by preventing
similar names from being registered by other businesses operating in the space. It is an intangible
asset to the business and builds the confidence of investor on the company.

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 REFRENCES

1. https://www.ssrana.in/Intellectual%20Property/Trademarks/Trademark.aspx.
2. https://blog.ipleaders.in/registration-of-trademarks/.
3. https://www.legalraasta.com/trademark-registration-process-in-india/.
4. http://newdelhi.usembassy.gov/iprtrademark.html#_ftn2
5. https://www.wipo.int/portal/en/.
6. https://www.legalraasta.com/trademark-registration-process-in-india/
7. www,jstor.org
8. www.heinonline.com

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