Trade Marks Registry

Whats is Trade Marks Registry

The Trade Marks Registry (TMR) was established in India in 1940. It administers the Trade Marks Act, 1999 and the rules thereunder. The Registry functions under the superintendence and control of the Controller General of Patents, Designs and Trade Marks (CGPDTM), Mumbai. The Office of CGPDTM is a subordinate office under the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India. The objective of the Trade Marks Registry is to register trade marks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register trade marks which qualifies for registration under the Act and Rules.

To Know more about Trademark, visit the wiki page on Trademark.

Official Definition of Trade mark Registry

As defined in Legislation

Section 2(2)(e) of Trade Mark Act, 1999, specifies that any reference to the Trade Mark Registry shall be construed as including a reference to any officer to the Trade Mark Registry.

The Controller General of Patents, Designs and Trade Marks is the Registrar of Trade Marks, who is also assisted by officers designated such as Sr. Joint Registrar of Trade Marks & GI, Joint Registrar of Trade Marks & GI, Deputy Registrar of Trade Marks & GI, Assistant Registrar of Trade Marks & GI, Senior Examiner of Trade Marks & GI and Examiners of Trade Marks & GI. These officers discharge the functions of the Registrar under his superintendence and direction. Ordinarily, the Sr. Joint Registrar, Joint Registrar, Deputy Registrar and Assistant Registrar are authorized to hear and decide cases in respect of all proceedings under the Trade Marks Act, 1999. The Senior Examiner and Examiner of Trade Marks examine applications for registration of Trade Marks to see whether they qualify for registration. They also assist the Registrar in all procedural, administrative and supervisory functions connected with various proceedings under the Trade Marks Act and the Rules.

Jurisdiction of Trade marks registry

1. Mumbai is the head office of Trade marks registry; it exercises jurisdiction for the State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa
2. Ahmedabad office exercises jurisdiction for the States of Gujarat and Rajasthan and the Union Territories of Daman, Diu, Dadra and Nagar Haveli.
3. Kolkata office exercises jurisdiction for the state of Arunachal Pradesh, Assam, Bihar, Jharkhand, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura and Union Territories of Nagaland, Andaman & Nikobar Islands.
4. New Delhi office exercises jurisdiction for the States of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Uttarakhand, Himachal Pradesh, Delhi and the Union Territories of Chandigarh.
5. Chennai office exercises jurisdiction for the States of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and the Union Territories of Pondichery and Lakshadweep Island.

Legal Provisions related to Trade Marks Registry

Registration Process

In India, trademarks get registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks in India are registered under the Trademark Act, 1999 and Trademark Rules 2017 and authorizes the trademark owner with a right to sue for damages when contraventions of trademarks occur. Trademarks are registered for a period of 10 years, after which it has to be renewed.

Under Section 57 of the Trade Marks Act, any person can apply for the rectification of the Trademark Register if they believe that a registered trademark is invalid or has been wrongly registered. The Registrar has the authority to investigate the said claims and rectify the registration as necessary.

The Registrar has the power to adjudicate on various matters related to trademark applications, including objections and disputes arising from any opposition. This means that the registrar is in charge of conducting inquiries and looking into any objections raised by the oppositions about trademark registrations. They also have to make sure that the trademarks are following all the necessary rules and regulations. Decisions made by the Registrar can be appealed to the Intellectual Property Appellate Board (IPAB), which serves as a higher authority for resolving disputes related to trademarks.

This process of registration is provided in chapter II of Trade Marks Rules, 2017 and includes:

• Filing of Application, the form T M -A is used for the purpose of registration. It can be filed for a single class of goods or services or multiple classes of goods or services. Refer Alphabetical index of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong.
• Acknowledgement of application by allotment of application no.
• Examination report, leading to approval, partial approval or rejection. The result of this examination are notified within a period of 30 days.
• Publication/Advertisement of the Trademark in Trade mark Journal.
• Objections Raised and then either these objections will be satisfied or it can lead to no registration due to any abandonment of application or rejection of the application. The objections are raised by way of Form T M-O.
• Issuance of Registration certificate.

Processing of TM Application in Trade Mark Registry

At present processing of TM application is done completely through TM electronic processing System and filing of application is allowed in hybrid mode, i.e. online as well as offline. Currently online filing has reached around 98%. Moreover, all applications received offline get digitized at its initial stage and movement of the file is done through complete electronic mode thereafter.

Retrieved from https://www.ipindia.gov.in/writereaddata/images/pdf/trade-marks-registration-in-india.pdf

International registration of marks (international application)

Chapter VI of the Trade Mark Rules, 2017 provide for protection of trade marks through international registration. The system of international registration of marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks ( referred as ‘Madrid Agreement’ in brief), which dates from 1891, and the Protocol Relating to the Madrid Agreement ( hereinafter referred as ‘Madrid Protocol’ in brief), which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. Common Regulations under the Agreement and Protocol also came into force on that date.

Under the Madrid Protocol, an international application may be based on either a mark that has already been registered (“basic registration”), or a mark that has been applied for but not yet registered (“basic application”). The international application can be filed only in respect of goods and/or services covered by the basic application or registration. The international application is received at the Office of Origin and it is forwarded to the WIPO, through it. The Office of origin is the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection (through establishment, domicile or nationality) to be entitled to file an international application.

To know more about International registration of trademark refer Guidelines for Functioning under Madrid Protocol.

Grounds of Rejection

The Trademarks Act provides for two main categories of restriction, namely, absolute and relative grounds for refusal of registration.

• Absolute grounds of rejectionSection 9 of the Act deals with the absolute grounds for restriction. The grounds are as follows:
  • Section 9(1): -

1. If the mark lacks any distinctiveness, and it is too generic in nature that no one person can have monopoly over such mark.
2. If the mark is suggestive in nature, where it is indicating towards the characteristics of the goods or services associated with it.
3. If the mark, even thorough is distinct but due to overuse, has become generic in that specific language Section 9(2): -

1. If the mark leads to deceiving the consumers and consequentially confusion among the consumers.
2. If the mark can result in hurting the religious sentiments of the public.
3. If the mark is obscene or contains anything obscene.
4. Specific restriction has been applied against using Emblems and names as covered under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Section 9(3): -

1. If the shape of the mark is indicative of the shape of the goods that they deal with.
2. If the shape of the mark is associated with the technical process of manufacturing that goods.
3. If the shape of the mark adds utility to the use of that good.

• Relative grounds of rejectionSection 11 covers the relative grounds of restriction, the basis is as follows:

1. If the mark already exists in the market and it covers identical or similar goods and services.
2. If the mark is identical to the already existing well-known Trademark.
3. If any law and specifically copyright law prevents the registration of such marks.

Opposition of a Trademark:

A ‘Trademark opposition’ means an objection filed by third parties, against registration of a trademark within 4 months of the advertisement of the trademark to be opposed.

Opposition is filled when a party opposes grant of a trademark application of any party

Any person, natural or legal, may file an opposition with the Registry. This includes any individual person(s), companies, partnership firm(s) and trust(s). Notably, the person filing the opposition need not have any commercial interest in the matter or a prior registered trademark in the Registry.

Cancellation of Trade Marks

A trademark cancellation is a legal tool whereby a party initiates proceedings to cancel an existing trademark registration of any party. This cancellation process can be initiated at two places, either the registry of trademarks or the high court having the jurisdiction.

Section 47, 50 and 57 of the Act lays down grounds for cancellation. They are:

• Trademark registered with the goods and services is done so without any bonafide or genuine intention to use it.
• Trademark was not in bonafide use for five years from the date of registration, and such period of five years has elapsed.
• A trademark registered is used in such a way which causes deception or confusion to the public.
• The proprietor has misrepresented or failed to disclose any material fact relating to it in the application for registration, which if appropriately disclosed, would not justify such registration.
• Change in the circumstances after registration such that it’s registration is not validate.
• When there is a condition mentioned in the Register of Trademarks, and there is a violation or failure to observe it, any person can file for cancellation of registration.

In order to initiate such proceedings in the trade marks registry, the form T M-O has to be filed. After receiving such an application, the registry notifies the same to the concerned proprietor. The receiver of the notification has to reply to the complaint in a counterstatement within a period of 2 months. Furthermore, the chance to present arguments and evidence is granted to both parties to this dispute by the registrar. In case the order of cancellation has been passed by the registrar then the mark will be deleted by the registry. This decision may be challenged at the High Court.

Abandonment of Trademark:

A dead trademark or abandoned trademark is a trademark which is no longer recognised or validated by any national/regional office of trademark registry. This status of “abandoned” refers to the situation wherein the trademark application has been discontinued either by the applicant or by the Registrar. The grant of this status takes place in the situation when the timelines are not adhered to properly, like non-renewal of the Trademark in the prescribed time frame, not responding to the claim of objection or cancellation or not responding to the notice of infringement. Once the trademark is abandoned, the same gets removed from the registry, however, this does not prevent the re-grant of the same trademark to the previous proprietor or any other applicant.

Appearance of Trade Marks registry in Database

Intellectual Property India Annual Report

The Intellectual Property India Annual Report reports on overall filing and processing of applications under Intellectual Property law. It provides figures related to number of trademark registrations and disposals. the rpeort provides classwise statement of number of trade marks registered, revenue generated by Trade marks Registry, etc.

Fig. 1: Details of Opposition/Rectification Applications filed at various offices from April 01, 2022 to March 31, 2023 and disposal thereof

Source: Annual report on intellectual property 2022-23. Retrieved from Intellectual Property India Annual Report

Fig. 2: Opposition/Rectification filed and cases disposed

Source: Annual Report on Intellectual Property 2022-23. Retrieved from Intellectual Property India Annual Report

Challenges

There is still space for improvement when it comes to examination, hearing proceedings and oppositions which lead to procedural delays in the registration of trademarks and resulting higher costs for applicants. When it comes to oppositions by a third party, there are close to 200,000 pending oppositions which the Trade Mark Registry will have to deal with in the near future.