Monthly Archives: May 2012

Registration Of Collective Marks Under Trademark Law Of India

In this article Perry4Lawand Perry4Law Techno Legal Base (PTLB) would discuss the procedure for the registration of collective marks under the Indian trademark law.

The Trade Marls Act 1999 has made special provisions for the registration of collective marks.  “Collective mark” is defined to mean a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932) which is the proprietor of the mark from those of others”.

Thus, to be registrable, the collective mark must be capable of being represented graphically and meet other requirements as are applicable to registration of trade marks in India in general.
While examining such application, the Examiner must keep in mind that:

(1) The collective mark is owned by an association of persons not being a partnership.

(2) The collective marks belong to a group and its use thereof is reserved for members of the group.

(3) The association may not use itself the collective mark but it ensures compliance of certain quality standards by its members who may use the collective mark.

(4) The primary function of a collective mark is to indicate a trade connection with the association or organisation who is the proprietor of the mark.

An application for registration as collective mark should be made on form TM-3. Wherever appropriate form TM-66, 64 or TM-67 will be used. The draft regulations governing the use of the collective mark is to be submitted with the application on form TM-49. It shall include –

(a) The name and object of association.

(b) The persons authorised to use the mark and the nature of control the applicant would exercise over the use.

(c) The condition of membership of association.

(d) Conditions of use of the mark.

(e) Sanctions against misuse.

(f) Procedure for dealing with appeals against the use of collective marks.

The Rules 127 to 133 of the Trade Marks Rules, 2002 make special provision in this context. It is expressly provided that provisions of the Trade Marks Act will apply to collective marks subject to the special provisions contained in Chapter 8. Accordingly, the examination of an application for registration of collective mark will also be subject to the same standards as applicable to registration of trade mark in general subject to the additional requirements to scrutinise the draft regulations governing use of the collective mark and statement of case filed under rule 129.

In the case of acceptance of the application subject to conditions or limitations the provisions of rule 38(4), 39, 40, 41 and 42 will be applicable.

Convention Application Under Indian Trademark Law

Perry4Lawand Perry4Law Techno Legal Base (PTLB) have already discussed the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999 and the procedure for registration of trademarks in India is governed by the same.
Once a proper trademark application is filed, the examination of trademark application under the trademark law of Indiabegins.
In some cases, the application may contain a declaration claiming priority as per the Paris Convention. In such cases, it should contain the information pertaining to date of the earlier application, number of earlier application, state or country in which the earlier application was filed or where the earlier application is regional or an international application, the office with which it was filed and the country or countries for which it was filed.
If the number of the earlier application is not known to the applicant at the time of filing of the application the applicant may furnish the same within two months from the date of filing of application in India. The Registrar may extend the period if he is satisfied that due to the circumstances beyond control, the applicant could not furnish the particulars within the initial two months period, on a request made on Form TM-56 for the purpose.

Under section 154(2) of the Trade marks Act 1999 of India, where a person has made an application for the registration of the trade mark in the convention country and he makes an application for registration of the trade mark in India within six months after the date on which the application was made in the convention country, the trade mark shall, if registered, under the Trade Marks Act, 1999 be registered as of the date on which the application was made in the convention country. That date shall be deemed to be the date of registration for the purpose of the Act. Under subsection (3) where applications are made in two or more convention countries, the period of six months will be reckoned from the date on which the earlier or earliest of those applications was made.

The above period of six months which is the statutory requirement is to be strictly complied with for giving the benefit of priority date. Where the application is not filed within six months only the actual date of filing in India will be given and no priority date will be admissible.

Where a right to priority is claimed by reason of an application for registration of a trade mark duly filed in a convention country under section 154, a certificate by the Registry or competent authority of that trade marks office shall be included in an application for registration under sub-rule (3), (4), (6), (7)(b), 8(b), (11), (17(b) or (18)(b) of rule 25, as the case may be, and it shall include the particulars of the mark, the country or countries and the date or dates of filing of application and such other relevant particulars as may be required by the Registrar.

Unless such certificate has been filed at the time of the filing of the application for registration, there shall be filed, within two months of the filing of such application certifying or verifying to the satisfaction of the Registrar, the date of the filing of the application, the country or countries, the representation of the mark, and the goods or services covered by the application.

Where a single application under sub-section (2) of section 18 is filed from a convention country for one or more classes of goods or services, the applicants shall establish a sufficient ground to the satisfaction of the Registrar for the date of filing of application in all such classes.

Examination Of Trade Mark Applications Under Indian Trademark Law

Perry4Lawand Perry4Law Techno Legal Base (PTLB) have already discussed the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999 and the procedure for registration of trademarks in India is governed by the same.
In this article Perry4Law and PTLB would discuss the process of examination of trademark applications under the Trade Marks act 1999. Once the data entry (including scanning and Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination.
The Examination of Trade Mark application by the Examiner must ensure that the applicant has complied with:
(1) Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules.
(2) Substantive requirements for registrability of the mark
The Examiner must pay a special attention to ascertain:
(1) Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002.
(2) Whether any same/similar mark in respect of same/similar goods/services is there on record
(3) Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999
(4) Whether any restriction, condition or limitation is required to be imposed.
The Examiner doing the examination work will give a consolidated “Examination Report” mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark.
A computer generated “Search Report” short listing conflicting marks on record will be attached with the Examination Report. The examiner will mention all existing deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant or its authorised agent is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
The examination of trade marks for acceptability under the Trade Marks Act 1999 must be by reference to the provisions of that Act and Rules framed there under taking into account the established practice of the Registry and the law as laid down or endorsed by the Intellectual Property Appellate Board (IPAB) and by Courts in India which is binding on the Registrar.
Section 91 of the Trade Marks Act, provides for an appeal against an order or decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In some cases, parties may also invoke the writ jurisdiction of High Courts. It is obvious, therefore, that whenever the Registrar or any officer acting for him passes an order as a tribunal under the Act it should be a reasoned and a speaking order. [See Rule 40 of Trade Marks Rules, 2002].

Procedure For Registration Of Trademarks In India

In this article Perry4Lawand Perry4Law Techno Legal Base (PTLB) would discuss the required documents and formalities for trademark registration in India. The trademark law of India is incorporated in the Trade Marks Act 1999.
Applications for registration of trade marks are to be filed in the prescribed manner. Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. An application to register a trade mark for a specification of goods or services included in any one class shall be made in Form TM-1. An application to register a trade mark for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2. A single application for the registration of a trade mark for different classes of goods or services from convention country shall be made in Form TM-52. An application to register a textile trade mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule shall be made in Form TM-22. An application to register of a textile trade mark other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule from a convention country under shall be made in form TM-45.
An application to register a collective trade mark for a specification of goods or services in any one class shall be made in Form TM-3. An application to register a collective trade mark for a specification of goods or services in any one class from a convention country shall be made in Form Tm-64. An application under section 71 to register a certification trade mark for a specification of goods or services included in any one class shall be made in form TM-4. An application under section 71 to register a certification trade mark for a specification of goods or services in any one class from a convention country shall be made in Form TM-65. A single application for the registration of a trade mark for different classes of goods or services shall be made in Form TM-51.
An application to register a series trade marks for a specification of goods or services included in a class or for different classes shall be made in form TM-8. An application to register a series trade mark for a specification of goods or services included in a class or different classes from a convention country shall be made in Form TM-37.
An application for the registration of a trade mark for goods or services shall -
(a) Explain with sufficient precision, a description by words, of the trade mark if necessary, to determine the right of the application;
(b) Be able to depict the graphical representation of the trade mark;
(c) Be considered as a three dimensional trade mark only if the application contains a statement to that effect;
(d) Be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect;
An amendment to divide an application under proviso to section 22 shall be made in Form TM-53. An application, not being a series trade mark shall be in respect of one trade mark only for as many class or classes of goods or services as may be made. In the case of an application for registration in respect of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.
The specification of goods or services shall not ordinarily exceed five hundred characters for each class. An excess space fee as prescribed in the First Schedule is payable with each application in Form TM-61.
A single application for the registration of a collective mark -
(a) In different classes shall be made in Form TM-66;
(b) In different classes from a convention country shall be made in Form TM-67.
A single application for the registration of certification trade mark –
(a) In different classes shall be made in form TM-68;
(b) In different classes from a convention country shall be made in Form TM-69.
Where an applicant files a single application for more classes than one and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods or services to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of the original filing date or in the case of an application from a convention country the convention application date provided the claim was otherwise properly asserted in the initial application.
An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
Every application for registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by five additional representations of the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class or classes of goods or services for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, if any, and such other particulars as may from time to time be required by the Registrar and shall be signed by the applicant or his agent.
At any time before the publication of the application in the journal, the applicant may request in Form TM-53 for the division of the application into separate application or applications, as the case may be, in respect of one or more marks in that series and the Registrar shall, if he is satisfied with the division requested conforms with sub-section (3) of section 15, divide the application or applications accordingly.
Where the name or description of any goods or services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services other than the goods or services so named or described. Where the name or description of any goods or services appear on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods or services on the applicant giving an undertaking that the name or description will be varied when the trade mark is used upon goods or services covered by the specification other than the named or described goods or services. The undertaking so given shall be included in the advertisement of the application in the Journal under Section 20.
A trade mark application is to be filed at the “appropriate office” of the Registry within whose territorial limits, the principal place of business in India of the applicant is situate. In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business. If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located. No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered.
Where the trade mark contains a word or words in scripts other than Hindi or English, a transliteration and translation of each word in English or in Hindi should be given indicating the language to which the word belongs, at the time of filing the application to facilitate completion of data entry at the initial stage itself. An endorsement must be entered on the Register for all trade marks containing words in a language other than English/Hindi and/or characters other than Roman/Devnagiri characters Where an applicant has given the translation/transliteration, an endorsement will be entered on the system. Where no translation/transliteration has been provided, the Examiner should request one and enter the appropriate endorsement on the system when the information has been received. Where Chinese or Japanese characters appear in the trade mark the applicant should be requested to provide their transliteration in the Pinyin system in the case of Chinese characters and the Hepburn system in the case of Japanese characters as per UK practice.
Section 15 (3) makes provision for registration of trade mark as series in respect of the same or similar goods /services where the marks, while resembling each other in the material particulars thereof and yet differ in respect of -
(1) Statement of goods or services in relation to which they are respectively used or proposed to be used; or
(2) Statement of number, price, quality or names of places; or
(3) Other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
(4) Colour
It is an essential condition of registration that the differences in the “series marks” should be only in respect of non-distinctive matters, such as size, (8 ½” size), description of the goods, (bleached, khaki shades etc), price, quality etc. To qualify for registration as series, the mark should resemble each other in the material particulars but differ only in matters of non-distinctive characters which do not substantially affect or alter the identity of the mark. The test is NOT simply whether the marks in the series would be regarded as confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.
Further, it is not enough for marks to share the same conceptual identity if there are substantial differences in the visual or aural identities of the marks. The matter must be assessed by reference to the likely reaction to the marks of an average consumer of the goods/services in question.

The Trademarks Law Of India

In this article Perry4Lawand Perry4Law Techno Legal Base (PTLB) would discuss the applicable trademark law of India.
The Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to Trade Marks in India. The Preamble to the TMA 1999 explains the purpose of the Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.
Some of the salient features of the TMA 1999 have been outlined in the Statement of Objects and Reasons annexed to the Trade Marks Bill. These are:
(a) Providing for registration of trade mark for services, in addition to goods;
(b) Registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the provisions of defensive registration of trade marks are proposed to be omitted;
(c) Amplifications of factors to be considered for defining a well known mark;
(d) Doing away with the system of maintaining registration of trade marks in Part A and Part B with different legal rights, and to provide only a single register with simplified procedure for registration and with equal rights;
(e) Simplifying the procedure for registration of registered user and enlarging the scope of permitted use;
(f) Providing enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods;
(g) Providing an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Courts;
(h) Transferring the final authority relating to registration of certification trade marks to the Registrar instead of the Central Government;
(i) Providing enhanced punishment for the offences relating to trade marks on par with the present Copyright Act, 1957, to prevent the sale of spurious goods;
(j) Prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;
(k) Extension of application of convention country to include countries which are members of Group or union of countries and Inter-Governmental Organisations;
(l) Incorporating other provisions, like amending the definition of “trade marks; provisions for filing a single application for registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of Courts to bring the law in this respect on par with the copyright law, amplifying the powers of the Court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure.
The TMA 1999 is in conformity with two major International Treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.
All the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules came into effect w.e.f. 15.9.2003 as per notification No. S.O. 1048(E) dated 15.9.2003.

Trademark Registration In India: Documents And Formalities

The consolidated FDI policy of India 2012 by DIPP has brought many significant changes in foreign direct investment (FDI) regime of India. Many companies would be investing in India to strengthen their presence in India.
This would also necessitate protecting their intellectual property rights in India. There are many law firms that are providing world class intellectual property rights services in India.

At Perry4Lawand Perry4Law Techno Legal Base (PTLB) we believe that besides protection of intellectual property rights (IPRs), safeguarding online reputation management, online brand protection, domain name protection, etc are also required to be considered seriously.
These issues are also closely related to trademark registration in India. For instance, domain name protection in India is still vindicated under the Indian Trademark Act, 1999. Similarly, brands and online reputation are also related to Trademark in India.

There are certain documents and formalities required for trademark registration in India. If these documents are not filed properly or the formalities are not duly fulfilled, the trademark application can be rejected. So it is of utmost importance that a trademark application must be properly filed by competent lawyers.
Every company that wishes to commercially operate in India must make its trademark policy and strategy very robust and effective. Inadequate trademark protection can result in exploitation of the same. Similarly, if a company uses the trademark of another individual or company, it can be prosecuted in India.
Any person desiring to register a trademark must file an application in the prescribed manner and by paying the requisite fee. The said application, after filing, is examined by the Registrar utilising the database it manages. Depending upon the Registrar’s observations, either the application is accepted or Registrar’s objections are raised.
If the application is accepted, it would be published in the Trade Marks Journal and any person can oppose the grant of registration by filing a notice of opposition within the prescribed period. If an application is opposed, the rights of the applicants and opponents are determined in accordance with the provisions of the Trademark Act and/or the common law rights which the parties may claim. Such determination is made by the Registrar after following the due process of law, procedure and providing an opportunity of being heard to the respective parties.