Procedure of Registration and Protection of Trademark in India

Introduction:

India, with its blooming entrepreneurship programmes and national projects like “Make in India”, has increasingly widened the scope of various small as well as big business and with that the necessity of trade mark registration comes as a corollary. But, the legislation to regulate the trade mark is not a new concept before this Government which is proved by the enactment of The Trade Marks Act, 1999[1] and India’s participation in Madrid protocol[2] in 2013.

As the Hon’ble Supreme Court interprets the object of trade Marks Law in India that the law of Trademark is to secure those businessmen and proprietors who sells their goods and services with distinct registered trademark and protect them against any business malpractice with the intention of harming or taking advantage of the previous businessman.[3]

In this context, this article put forward an exhaustive compilation of the procedure of registration and protection of the registration in India as well as in trans-border platform.

Procedure for registration of trademark:

Under Section 6[4] of the Trade Marks Act, 1999, a register, either in papers or digital form shall keep the records, wholly or partly, of all trade marks with the names, address, description of the proprietor’s notifications and assignments, except any trust and be kept at every office premises of the Trade Marks Registry.

The Registrar shall be liable, under Section 7[5], to classify the concerned goods and services in accordance with the international classification of goods and services for the Trade marks registration. Also, the it would be upon the discretion of the registrar to decide any question which may arise in deciding the class in which the goods and services are to fall. [6]

Under the Chapter III of the Trademark Act, 1999 the procedure is dealt with in multiple steps.[7] The procedures of Registration can be divided into 4 main heads mainly,

1. Application for Registration

2. Advertisement notice for any opposition

3. Amends and Correction

4. Registration.

1. Application for Registration :

According to the Section 18 of the Act[8], a person or persons who wishes or jointly wish, as the case may be, to be the proprietor of a trademark used or supposedly used by him, shall apply in a single application for its registration for different classes of services and goods in the office of the Trade Marks Registry, which is situated within the territorial limits of principle place of business of India and the person or the person whose name first mentioned in the case of joint applicants, has his business in India. If the Registrar believes that there is a ground for refusal or conditional acceptance of the application and can be the subject of amendments, modifications, conditions or limitations etc, then it would depend on valid grounds mentioned by the Registrar. Further, if the Registrar believes that the application for registration of a trademark has been accepted under i) in error or ii) in the circumstances of the case it should not be accepted or is a matter of limitation, conditions additional or different from the conditions and limitations of the accepted application, can withdraw the same application under Section 19[9].

2. Advertisement or Notice in public for opposition:

After the application has been accepted, with conditions and limitations, if any, should be advertised according to the provisions of Section 20 [10]. If, within three succeeding months from the application, any objection arises from the part of any public the registrar must consider so and ask the aggrieved party to make a counter application repealing the previous application in the said manner and also permit any correction of any error as it may follow.

3. Amendment and correction:

The Registrar, if feels fit, at anything, before or after the acceptance of the said application for registration under section 18[11], may permit the correction of any error that may follow under the Section 22[12].

4.  Registration:

Under the Section 23[13], the applications which 1. are not opposed and time for notice of opposition has expired or, 2. were opposed but the objection was in favour of applicant, will be registered. According to sub-clause 2, the applicants will be provided with a certificate in the prescribed form of registration after the trade mark registration. Unless the Registration of trade mark is completed within 12 months of its application, will be treated as abandoned. Under sub-clause 4, the Registrar is allowed to permit an amendment the register or the certificate for mending the clerical mistakes.

In case of Superon Schweisstechnik India v. Modi Hitech India Ltd.[14] (2018) 250 DLT 308, the question arises whether trade mark over a abbreviated title can be registered. The plaintiff, with distinct registered trade mark “Superon” sells goods that of the same as the defendant, which has very different primary trade mark “GMM”. While the plaintiff used the “VAC PAC” as an abbreviated form Vacuum Package and claimed to have ownership on the same and demanded permanent retainment order in the usage of the same. Under Section 9(1)(a), which purports absolute grounds for refusal of registration and Sec 11(3)(a), of the relative grounds for refusal in addition to law of passing of, the Court determined that merely abbreviation of words cannot be claimed to have any trade mark ownership. In the judgment, the Court also considered Godfrey Phillips India Limited case and came to the conclusion that the primary trademarks were contrasting in this case and the plaintiff having no real prospect to succeed, cannot claim the ownership of trademark on the abbreviated word.

 Protection of Trade

mark:

Chapter IV[15] deals with the effect of registration and the beneficiary protections endorsed in favour of the registered trade mark.

Under the section 25[16], it is given that the duration for the registration would be for 10 consecutive years and then, then it has to be renewed from time to time in accordance to this section.

The registration of trade mark also guarantees some rights protecting the trade mark which is explicitly mentioned under chapter IV and some under Chapter II of the same Act.

The registration of Trade mark can absolutely be refused under Section 9[17], on the ground, that (a)it has no distinctive character which separates others goods from the concerned goods (b) includes the mark designating the kind, quality, quantity, intended purpose, values, geographical origin, or time of the production of the goods or which also renders the other characteristics of the goods or services. (c) consists of the marks or indications which has achieved a status of customary title in the current language or in the practices thereof.

The registration can also be subject to refusal on the following relative grounds[18], that (a) it is identical to the earlier trade mark and similar to the goods and services provided (b) similar to earlier trade mark and identical to the goods and services. But if the case arises where (a) the concerned trade mark is identical or similar and (b) The goods and services concerned are not similar to the goods and services which were earlier registered, the trade mark can still be repealed if,  the earlier trade gained wide reputation on the same and using it on the same repute would be unfair advantage of or detrimental to the earlier trade mark.

According to Section 28(1)[19], the registration of the trade mark gives the registered proprietor the exclusive right to use the trade mark vis a vis the goods and services which were registered under the trade mark and therefore the conditions and limitations are also considered. It also to be noted under sub-clause 3, that if a trade mark is being registered jointly, it does not give exclusive right to one of the applicants to enjoy against another.

This Act also provides for the protection against any infringement of the trade mark. For the purpose of understanding the conditions of infringement, under Section 29(4)[20], it can be categorized into 3 groups, that,

(a) the trademark is identical or similar to the registered trade mark.

(b) the use is made in relation to goods and services which are not registered under similar registration.

(c) the registered trademark is widely known throughout the country and using it by others is detrimental to its repute.

So, both, the mark and the goods and services rendered can be identical, or the former, identical and the latter one, similar, the latter one identical and the former one similar. This, according to sub-clause 2 will be regarded as infringement.

 In case of Mankind Pharma Limited v. Chandra Mani Tiwari & Anr.[21] , it was held by the Court that the proprietor can enjoy absolute monopoly over the registered goods and services only and cannot exercise this ownership over all kind of goods under the same class.

The registration, itself provides prima facie evidence of the validity of the trade mark under Section 31[22]. In case, the registered trade mark has acquired a distinctive character regarding certain goods and services before the commencement of any legal proceeding which challenges the validity, the trade mark cannot be held invalid.

In case of Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors[23]., the defendant, Everyday India Ltd. compared their LED with the defendant’s LED with a statement “check lumens and price before you buy”.  The Plaintiff claimed that it was intended to disparaging their business by this misleading advertisement. The Court dismissed the case on the ground that mere trade puffery, even though enraging the other rivals does not make it infringement of trade mark.

It is interesting to note that this Act also provides Rights for the successor of the similar trade mark which is used in relation to the same goods, if (a) the former proprietor used it prior to the concerned proprietor in trading the similar goods and services. (b) earlier used prior to the registration of the trade mark by the concerned proprietor.

By the virtue of Section 35[24], the registered trademark having name, address of business or, of the name, or of the name of the place of the business or any predecessors or any other bonafied person, in relation to any good or services, is exclusively enjoyed by the registered proprietor and cannot be interfered by any other registered trade mark owner.

Further for one’s business to flourish on international platform, it is required to register the trade mark under one or more international protocols or treaties. There are multiple resources for the trade mark to be registered on International horizons and secure it. The most significant ones are as follows:

1. Paris Convention on trade mark:  like the pioneer of Human Right convention, Paris held the oldest protocol of all conventions for protection of intellectual property with more than 170 membership and are located in almost all countries.[25]

2. Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS): With the initiative of World Trade Organization (WTO), in 1995 introduced TRIPS agreement with the intention of smoothing the process of registration of trade mark out.[26]

3. Madrid system: This protocol was an evolved form of the Madrid Agreement, 1891 and was enforced in 1995. It provides cost-effective and efficient way of registering the trade mark and facilitates the managing of the same and is managed by WIPO[27].

4. European Community Trade mark (EUTM): it is a child of European Union (EU). With the EU countries, and this institution the proprietor can easily register his trade mark for his business and secure his mark on international platform as well[28].

In the landmark judgment regarding the Trans-border Reputation, the Supreme Court recognized and interpreted the trade mark regulations and concepts. In N.R. Dongre v. Whirlpool Corporation[29], it was held that the trademark “Whirlpool” has obtained reputation through out the country and the whirlpool corporation has also acquired the goodwill of business and hence, the trade mark of “Whirlpool” has acquired Trans-border reputation.

Conclusion: Even though with the growing facilitated circumstances, the number of new businesses is increasing in the market, yet the owners of a trade are still unaware of the legislations and facilities to protect their trade and helping the business tycoons to steal their ideas of trade.

With the afore-mentioned procedures and institutions to register and secure the trades, the author wishes to make the general members of our trading fraternity to become aware and take steps to secure their creation.

Author Details: Chayanika Das [Student, Department of Law, University of Calcutta]

[1] The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999

[2] uspto, https://www.uspto.gov/trademark/laws-regulations/madrid-protocol#:~:text=The%20Protocol%20Relating%20to%20the,not%20a%20substantive%20harmonization%20treaty, (last visited Dec. 28, 2020)

[3] Dau Dayal v. The State of Uttar Pradesh, (1959) 433 SCR Supl. (1) 639

[4] Id. at 6

[5] Id. at 7

[6] Intellectual property India, http://www.ipindia.nic.in/writereaddata/images/pdf/trade-marks-registration-in-india.pdf (last visited Dec 28, 2020)

[7] The Trade Marks Act, 1999, 18, No. 47, Acts of Parliament, 1999

[8]  Id, at 18

[9] Id, at 19

[10] Id, at 20

[11] Supra note 6, at 18

[12] Id, at 22

[13] Supra note 10, at 23

[14] Superon Schweisstechnik India v. Modi Hitech India Ltd.  (2018) 250 DLT 308

[15] The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999

[16] Id. at 25

[17] Id. at 9

[18] Id. at 11

[19] Id. at 28

[20] Id. at 29

[21] Mankind Pharma Ltd vs Chandra Mani Tiwari & Anr. (2018) 253 DLT 39

[22] Id. at 31

[23] Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors 2015 (62) PTC 64 [Del]

[24] Id. at 35

[25]wipo, https://www.wipo.int/treaties/en/ip/paris/#:~:text=The%20Paris%20Convention%2C%20adopted%20in,the%20repression%20of%20unfair%20competition. (last visited Dec. 28, 2020)

[26] World Trade Organization, https://www.wto.org/english/tratop_e/trips_e/trips_e.htm (last visited Dec. 28, 2020)

[27] Uspto, https://www.uspto.gov/trademark/laws-regulations/madrid-protocol#:~:text=The%20Protocol%20Relating%20to%20the,not%20a%20substantive%20harmonization%20treaty. (last visited Dec. 28, 2020)

[28] European Commission, https://ec.europa.eu/growth/industry/policy/intellectual-property/trade-mark-protection_en (last visited Dec. 28, 2020)

[29] N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714