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RAYAT COLLEGE OF LAW, ROPAR

PROJECT: - INTELLECTUAL PROPERTY RIGHTS

TOPIC: REGISTRATION OF TRADEMARK IN INDIA

SUBMITTED TO:

MRS.PARVEEN MAM

SUBMITTEDBY:

RAHIL VERMA

10TH SEMESTER

ROLL NO. 13687

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ACKNOWKEDGEMENT

I would like to express my special thanks of gratitude to

my teacher Mrs.Parveen Mam, who gave me the golden

opportunity to do this wonderful project on the topic

“Registration of trademark in India” which also helped

me in doing a lot of Research and I came to know about so

many new things I am really thankful to her. 

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DECALARATION

I hereby declare that the project work entitled “Registration of

trademark in India” submitted to the Rayat College of is a record

of an original work done by me under the guidance of

Mrs.Parveen Mam, this project work is submitted in the partial

fulfilment of the requirements for the award of the degree of law.

The results embodied in this thesis have not been submitted to

any other University or Institute for the award of any degree or

diploma.

(SIGNATURE)

Rahil Verma

Date: 7th MAY, 2020

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Table of Index

Registration of trademark in India 5

What is Trademark Registration? 5

Why is Trademark Registration important in India? 6

Procedure for registration of trademark 7

Documents for Trademark Registration in India 8

Types of Trademark Registration 9

Trademark Registration Certificate Validity 10

Advantages of registering a trademark 10

Duration of Trademark 11

Restoration of trademark 11

Absolute Grounds for Refusal of Trademark Registration 12

Relative Grounds for Refusal of Trademark Registration 13

Conclusion 13

Webliography 13
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Registration of trademark in India

INTRODUCTION:-1

The development of law of trademarks can be traced back to the onset of the
industrial revolution which enabled large scale production and distribution of
goods. With the emergence of competitive market economy, manufacturers
began to identify their products by certain symbols, marks, or devices so as to
distinguish their goods from similar goods manufactured and marketed by
others. In addition, manufacturers also started advertising their goods by using
their trade marks on them. This led to trade mark acquiring goodwill and
reputation among consumers of goods. Realizing the economic worth of the
trade marks, the competitors had a temptation to copy well known trademarks
or adopt deceptively similar trademarks so as to reap profits by trading on the
reputation of another trade mark. The necessity for protecting the goodwill and
reputation of a trademark was, therefore felt in all the nations which led to the
adoption of trademark law everywhere. At international level, the first
multilateral convention i.e. Paris Convention for the Protection of Industrial
Property was adopted in 1883.

MEANING AND DEFINITION OF TRADEMARK:-

A trademark includes any word, name, symbol, configuration, device, shape of

goods, packaging, combination of colours or any combination thereof which on
adopts and uses to identify and distinguish his goods from those of others.

According to section 2(1) (zb), a “trademark” means:

„a mark capable of being represented graphically and which is capable of

distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours;‟

What is Trademark Registration?

A trademark is any mark, logo, name, symbol, letter, figure, word, used by any
individual or the company in order to uniquely identify its goods or services
from those manufactured or sold by others. Hence, the customers must be
capable of distinguishing one’s goods or services from others. Trademark

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registration is governed by the provisions under Trade Marks Act, 1999.

Trademark registration is important as it is legally authorised by the government
in order to provide the exclusive rights to the owner for branding, selling,
manufacturing and using of the products and services.

Why is Trademark Registration important in India?2

A Great Business Opportunity

A product or service being sold under a registered trademark helps in building

up trust, reliability, quality, and goodwill in the minds of customers. It offers
you a unique identity when compared to other sellers especially when you sell it
on online platforms like Amazon, flip kart, etc.

A Legal Protection

In case you doubt that your trademark is being copied by anyone else, you can
take up the issue legally and sue them if you have registered your logo, brand
name or slogan.

Get Your Unique Identity

Customers will identify a particular product or service only with the brand.
Registering a trademark ensures that competitors will not use it and hence it
remains as a company’s unique asset.

An Asset

The trademark can be a valuable asset in case your brand creates a name and
succeeds. It can be commercially contracted, sold and franchised.

Global Filing of Trademark

A trademark which is registered and filed in India can also be filed in other
countries outside India. Likewise, foreigners can also get a trademark registered
in India.

Two essential ingredients for Trademark registration:-3

The Mark is Capable of Being Represented graphically– ‘Graphical

representation’ has been defined under Section 2(1) (k) of Trademark Rules,
2007 as representation of a trademark for goods or services represented or
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capable of being represented in paper form and include representation in

digitized form. Such graphical representation of a trademark also encompasses
within its purview shape of goods, their packaging, combination of colours, in
other words it brings within its ambit “trade dress”. This essential requisite for
qualification as a valid trademark merely implies that the mark should be
capable of being put on the register in a physical form and also being published
in the Journal. This requirement of a valid trademark was further expounded by
the European Trademark Office, wherein it elucidated two primary reasons for
geographical representation a trademark:

 Enable traders to identify with clarity what other traders have applied for
registration as trademark and for what product;
 Enable public to determine with precision the sign which forms the
subject of trademark registration

Capable of Distinguishing Good and Services of One Person From Those of

Others- The definition of “trade mark” under Section 2(1)(zb)of the 1999 Act
means a mark “which is capable of distinguishing the goods or services of one
person from those of others”. Therefore, the use of a mark that is not capable of
distinguishing the goods of such proprietor of the trade mark would not qualify
for the protection under the TM Act[5]. This requisite of a trademark primarily
enumerates that a trademark must be distinctive i.e. it should not be devoid of a
distinctive character.

PROCEDURE FOR REGISTRATION OF TRADEMARK:-4

To apply for a trademark a person must adhere to the provisions enlisted under
Section 18 of the Act. The section requires any person applying for a trademark
to apply in writing in the manner that is prescribed for the registration. The
application has to contain the name of the mark, goods and services, the class
under which goods and services fall, the period of the use of the mark and the
personal details of the applicant such as name and address.

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Documents for Trademark Registration in India5

 Details like Name, Nationality & Address of the applicant.

 The incorporation certificate in case of company or LLP.
 In the case of the company which is eligible for the lower filing fee, can
refer Udyog Aadhar Registration.
 A detailed description of goods or services represented by the Trade
mark.
 Trademark application requires a trademark Class (out of total 45
trademark classes) to be mentioned, but one can also file multi-class
(Class 99) Trademark application.
 The power of attorney in Form TM-48 Format (Form of Authorization of
an agent) should be signed by the applicant.

Different Trademark Symbols:-

If you are filing the trademark registration online application, the following can
be the brand status.

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TM

You can add TM with your logo when the Application is pending for approval.
TM mark is only for Products.

SM

You can add SM with your logo when the Application is pending for approval.
SM mark is only for Services.

You can add R with your logo when your TM application has been approved by
the Registrar of the Trademark Registry.

Types of Trademark Registration:-6

The different types of Trademarks are as below:

Generic Mark

A generic mark for a trademark, describes qualities, characteristics, or

ingredients of the good your business sells.

Descriptive Mark

A descriptive mark identifies one or more characteristics of a product or service

and only serves to describe the product.

Suggestive Mark

A suggestive mark tells about the goods or services. A mark in this category
qualifies for protection without requiring a secondary meaning.

Fanciful Mark

A fanciful mark is a term, name, or logo that is different from anything else that
exists. This category is the easiest for obtaining trademark protection because it
typically doesn't compete with anything else or become too generic.

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Types of trademarks available:-7

 Names, including your own name or surname.

 An invented word or any arbitrary dictionary word or words. It does not
need to be descriptive of the character or quality of the goods/service.
 Letters or numerals or any combination.
 Symbols
 Monograms
 Combination of colours or even a single colour in combination with a
word or device.
 Shape of goods or their packaging.
 Marks constituting a 3-dimensional sign.
 Sound marks when represented in conventional notation or described in
words by being graphically represented.

Trademark Registration Certificate Validity:-

According to Section 25 of the Trade Marks Act, 1999, the period of

registration of the trademark is 10 years and after which, it may renew time to
time. The notice will be served by the Registrar after the expiration of
registration of the trademark to the proprietor/owner. The trademark will not be
removed from the register by the Registrar if an application is made in the
prescribed form along with prescribed fee and surcharge within 6 months from
the date of last expiration. Thereafter such trademark will be renewed again for
the period of next 10 years.

Advantages of registering a trademark:-8

Trademark registration affords several advantages, including the following:

1. Provides a visible deterrent and constructive notice to potential infringers

(by use of the ® symbol or the TM symbol).
2. Permits citation of the trademark by the trademark office in decisions on
applications to register potentially confusingly similar marks.
3. Allows the trademark owner to grant a valid license to another party to
use the trademark.

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4. A registered trademark will likely be disclosed in a search conducted by a

third party for a similar mark, alerting that party to a potential conflict
with the earlier registered trademark.
5. In some countries, registration is required in order to enforce rights in the
mark against infringers.
6. Because the advantages vary from country to country, consult with
qualified counsel or the local trademark authorities concerning each
country in which use or registration of a trademark is desired.

DURATION OF TRADEMARK:-9

The duration of registration of trade mark under section 25 is 10 years. But it

may be renewed from time to time. The initial duration of registration of a trade
mark under the Trade and Merchandise Marks Act, 1958 was 7 years.
Thereafter, the registration was renewable from time to time. The reason for this
amendment was to adopt the generally accepted international practice and to
reduce the workload of the Trade Mark Office.18

On the application made by the registered proprietor of a trade mark in the

prescribed manner and within the prescribed period and subject to the payment
of the prescribed fee, the Registrar shall renew the registration of the trademark
for a period of 10 years from the date of expiration of the original registration or
of the last renewal of registration, as the case may be.

RESTORATION OF REGISTRATION:-

According to section 25(4), where a trade mark has been removed from the
register for non- payment of the prescribed fee, the Registrar shall on receipt of
an application and on payment of the prescribed fee between 6 months to 1 year
from the expiration of the last registration of the trade mark, if satisfied that it is
just so to do, restore the trade mark to the register and renew the registration of
the trade mark for a period of 10 years either generally or subject to such
conditions or limitations as he thinks fit to impose. The Registrar may remove
the trademark from the register if at the expiration of the prescribed time; those
conditions have not been duly complied with. The Registrar shall advertise the
fact forthwith in the Journal.

Who are eligible to apply for Trademark Registration in India?

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Any person whether an individual, proprietor, company or other legal entity

who claims to be an owner of the trademark can apply for trademark in India.
The application for trademark can be filed and within few days after a grant of
registration, one can start using “TM” symbol. The time duration required for
Trade Mark Registry to complete formalities is 18 to 24 months. One can use
the registered symbol after the trademark is registered and grant of registration
certificate. Once a trademark is registered, it will be valid for 10 years from the
date of filing, further which can be renewed time to time.

Absolute Grounds for Refusal of Trademark Registration:-10

Section 9 of the Trademark Act, 1999 enumerates grounds on which a

trademark registration can be absolutely refused. The Act provides that
following marks can be refused:

1. Marks that are devoid of any distinctive character;

2. Marks which serve to designate kind, quality, intended purpose,
values, geographical origin or the time of production of goods;
3. Marks which have become customary in the current language or in the
established practices of trade;

Exception- Aforesaid mark shall not be refused registration if prior to date of

trademark application; the mark has acquired distinctive character or is a well-
known trademark.

 Marks that may cause deception or confusion in public;

 Mark comprises of matter that is likely to religious sentiments any class
of people;
 Mark comprises of scandalous or obscene matter;
 Mark is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950;
 If the mark consists of shape of goods which results from the nature of
the goods themselves;
 Mark consists of shape of goods which is necessary to obtain a technical
result;
 Mark gives substantial value to the goods;

Relative Grounds for Refusal of Trademark Registration:-11

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Section 11 provides that a mark shall not be registered:

a) If the mark causes likelihood of confusion on part of the public i.e.

likelihood of association with the earlier trademark;
b) If the mark is identical to a well-known trademark in India and use of the
later mark may be detrimental to the distinctive character of the well-
known trademark;
c) If the mark’s use in India is liable to be prevented by law of passing off or
copyright law;

The provision further envisages that where the goods are of different description
refusal will not be justified but registration may be refused if the mark is likely
to be deceptive or cause confusion.

CONCLUSION

Controller General’s office not only looks after the registration of Trademark,
but also review the application for renewal of trademark, scrutinizes the
opposition filed by any third party against the trademark published in the
journal and settle down the dispute related to the trademark registration if there
is any . Thus the office of Controller General is the most important office
dealing with all this issues related to not only Trademark but every other branch
of Intellectual Property.

WEBLIOGRAPGHY

1) https://www.inta.org
2) https://taxguru.in
3) https://www.vakilno1.com
4) https://www.lawsenate.com
5) https://vakilsearch.com
6) https://cleartax.in
7) https://sg.inflibnet.ac.in