Requirements for Trademarks Registration

WHAT ARE THE INTERNATIONAL TREATIES GOVERNING TRADEMARK LAWS IN INDIA?
Part II Section 2 (Article 15 to Article 21) of the TRIPS agreement contains the provisions for minimum standards in respect of Trademarks.
There are two international treaties governing Trademarks
Madrid Agreement Concerning the International Registration of Marks
Madrid Protocol.
In India, the Trade Marks Act, 1999 which was passed on 30th December 1999 and came into force on 15th September 2003 is in coherence with the provisions of the TRIPS Agreement. Trade Marks Act, 1999 provides for registration of trademarks for services in addition to goods, and has increased the period of registration and renewal from 7yrs to 10yrs.
WHAT ARE DIFFERENT PROVISIONS RELATED TO TRADEMARK IN
TRIPS AGREEMENT?
Art 15: Protectable subject matter includes any sign, combination of signs capable of distinguishing the goods or services from others. Registration depends on distinctiveness end use.
Art 16: Rights on the owners of registered trademark conferred to prevent third party not having his consent, from using in course of trade relating to identical goods/ services.
Art. 17: Exception to exclusive rights must be limited and take into account the legitimate interest of the trademark owner and of third parties.
Art. 18: The minimum term of protection is seven years, indefinitely renewable.
Art. 19: Requirements for use are to be limited in terms of both the minimum period of non-use and the admissibility of reasons for non-use.
Art. 20: Special requirements for use are limited, as well as the conditions of licensing and assignment of trademarks.
Art. 21: A trademark may be assigned without transfer of the business to which it belongs.
WHAT ARE THE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADEMARK IN INDIA?
The legal requirements to register a trade mark under the Legislation are:
The mark should be capable of being represented graphically.
The mark should be capable of distinguishing the goods or services of one undertaking from those of others.
The mark should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person
WHO CAN APPLY FOR A TRADE MARK AND HOW?
Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services for which the trade mark is being used or is proposed to be used, name and address of the applicant and agent (if any) with power of attorney, period of use of the mark and signature. The application should be in English or Hindi. It should be filed at the appropriate office.
HOW CAN A FOREIGN INVESTOR REGISTER HIS TRADEMARK IN INDIA?
Get trademark searches conducted in the India.
Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks.
Seek counsel’s opinion for deciding if the trademark is available for use or not.
Apply for registration if the trademark is available for use.
Hire a watching service to monitor the trademark journals in order to alert.
Make press releases, cautionary notices and advertise the mark.
Register your domain names including country coded top level domain names in India.
Take immediate steps to protect your trademark, either by the means of filing oppositions, cancellations, conducting investigations, sending Cease and Desist notices or initiating appropriate civil and criminal actions.
IS INTERNATIONAL CLASSIFICATION APPLICABLE UNDER INDIAN LAW?
Under Trade Marks Act, 1999 Goods and Services are classified according to the International Classification of goods and services. Schedule IV of the Trade Marks Act, 1999 provides a summary of list of such goods and services falling in different classes which is merely indicative.
WHAT ARE THE BENEFITS OF REGISTERING A TRADE MARK?
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark. Registration of a mark is indicated by the use of the symbol (R) in relation to the goods or services in respect of which the mark is registered.
A registered trade mark owner can seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc.
WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED IN INDIA?
Under TRADEMARK ACT following trademarks can be registered.
Product trademarks: that is affixed to identify goods.
Service trademarks: used to identify the services of an entity.
Certification trademarks: are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features.
Collective trademarks: are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.
WHAT TRADEMARKS AVAILABLE FOR ADOPTION IN INDIA
An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
The right to proprietorship of a trade mark may be acquired by either registration under the Legislation or by use in relation to particular goods or service.
Letters or numerals or any combination thereof.
Devices, including fancy devices or symbols and 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.
WHAT ARE CONVENTION APPLICATION AND INTERNATIONAL TREATIES?
A person or company from a convention country, may within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national is deemed to have registered his trademark in India, from the same date on which he or she made application in the home country.
Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.
WHAT ARE THE REMEDIES FOR INFRINGEMENT OF TRADEMARK IN INDIA AND PASSING-OFF?
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:
An action for infringement' in case of a registered trademark; and
An action for passing off' in the case of an unregistered trademark
While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration`.
WHAT IF A TRADEMARK HAS ALREADY BEEN REGISTERED BY SOMEBODY ELSE IN INDIA?
The Trademark Act provides for cancellation procedure. The law also recognises the cross border reputation of a mark and civil or a criminal action can be initiated.
WHEN TO USE SYMBOL ® IN INDIA?
When a trademark has been registered in India, the proprietor can use the symbol ® in India.
WHEN CAN THE SYMBOL ™ BE USED IN INDIA?
Using this symbol with your trademark simply implies that you claim to be the proprietor of the trademark.
Courtsey:- www.thelegist.com