TRADEMARK REGISTRATION

Trademark Registration

A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of 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. It is legally recognized as a type of intellectual property.

A trademark application can be filed by any person or legal entity in India. The mark does not necessarily have to be used before applying for registration although a prior used mark improves the chances of registration. Foreign nationals and foreign entities can also file trademark applications in India and secure registration without additional requirements.

Advantages of Trademark Registration

Legal protection

Registering a trademark provides legal protection against misuse of any kind including infringement or copy of a company’s name or logo, which is often a company’s most valuable asset.

It grants the trademark owner exclusive nationwide ownership of the mark which can be legally upheld in the courts of law in any part of the country.

Exclusive right

Registering a trademark grants the trademark owner the right to make the mark exclusive and incontestable and use it in a variety of mediums.

This will be immensely useful to prove the validity of the mark and the registrants ownership incase of any infringement by a third party.

Brand recognition

Products/ services are identified by their logo which helps create brand value over time. A strong brand is a huge pull for new customers and an anchor for existing customers.

Registering a trademark early and using it will create goodwill and generate more business for the brand owner.

Asset creation

A registered trademark is an intangible asset for a company as it helps generate more business and helps attract and retain customers by account of brand recognition.

It also grants the business legal right to use a logo exclusively for 10 years with the choice to re-register.

Trademark Renewal

A trademark is used by a business to distinguish its goods or services from other similar goods or services from a different business. The trademark symbols, logos, labels, names are represented with an “R” at the end. A trademark can be registered under the Trade Marks Act, 1999. The trademark cannot be registered if it is found offensive, non-distinct and contains government emblems.

The validity period of trademark in India is for a period of 10 years as per section 25 in the Trade Marks Act, 1999. The registered trademark can be renewed for another 10 years with proper documentation and meeting the required criteria. Let us have a look at the procedures to the renewal and restoration of trademarks in this article.

Renewal of a Trademark

Duration to renew a Trademark

• The renewal can be filed within one year prior to the date of expiry as per rules 57 and 58 in Trade Mark rules 2017.
• The renewal can be filed within six months prior to the date of expiry as per rules 63 and 64 in Trade Mark rules 2002.
• The renewal can also be filed within six months after the date of expiry.

File Trademark Opposition

A trademark application filed by an applicant can be opposed by any person for various reasons during the trademark application stage . The person filing the opposition need not have any commercial or personal interest in the matter or be a prior registered trademark owner.

Who can Oppose a Trademark Application

According to Section 21 of the Trademark Act, “any person” can file a trademark notice, irrespective of commercial or personal interest in the matter. The question of bona fides of the opponent does not arise. Hence, trademark opposition filing can be filed by a customer, member of the public or competitor or any other person. Also, the person filing the trademark opposition need not be a prior registered trade mark owner.

Reasons for Trademark Opposition

A trademark opposition can be filed under different sections like absolute grounds, relative grounds, prohibited mark or the opponent may also raise their own objection with regard to the proprietorship of the trademark opposed. The Indian Trademark Law does not provide any specific grounds of opposition. Hence, the reason for trademark opposition could be varied.
The following are some of the grounds for trademark opposition in India:

• The trademark is similar or identical to an earlier or existing registered trademark.
• The trademark is devoid of distinctive character.
• The trademark is descriptive in nature.
• The trademark registration application is made with bad faith.
• The trademark is customary in the currently language and or in the established practices of a business.
• The trademark is likely to deceive the public or cause confusion.
• The trademark is contrary to the law or prevented by law.
• The trademark is prohibited under the Emblem and Names Act, 1950.
• The trademark contains matters that are likely to hurt religious feelings of any class or section of people.

Time Limit for Trademark Opposition

After advertisement of a trademark in the Trade Marks Journal, any person can oppose registration of the trademark for a period of 3 months (which may be extended by a period not exceeding 1 month). Trademark opposition filings can be done only at the Trademark Registrars office and cannot be taken directly to a Court or the Appellate Board (IPAB). If a trademark opposition is successful, the registration of the trademark will be refused. If the trademark opposition application is rejected, the trademark will be registered.