Registering Trademarks in India
By Vikas Srivastava
Jun 2. – Emerging economies like India and China are the new investment hub for developed countries. On the one hand the emerging economies provide cheap labor, low cost resources and educated professional, but on the other hand businesses are exposed to certain unseen losses like infringement of intellectual property. Many times, businesses do not take adequate steps for protection of their brand and intellectual property while doing business in emerging economies and, as a result, they can either lose brand value or valuable intellectual property like trademarks and patents.
In India, the registration and protection of trademarks is governed by the Trademark Act (1999) and trademark rules and regulations.
Application for trademark
In India, the proprietor of the trademark can apply for the registration of its mark for goods as well services. A person may apply for registration of a trademark at the Trademark office under whose jurisdiction the applicant’s principal place of business in India falls.
If the principal place of business is outside India, the application can be filed in the trademark office under whose jurisdiction the office of the proprietor’s appointed lawyer is located.
If the company is about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company’s favor.
Before making an application for registration, it is prudent to conduct a trademark search in the trademark office to ensure that registration may not be denied in view of the resemblance of the proposed mark to an existing one or prohibited one.
Reasons for registering
The registration of a trademark confers upon the owner the exclusive right to use the registered trademark. This is indicated by the use of the symbol (R) in relation to the goods or services in respect to which the mark is registered. The exclusive rights to use the trademark is subject to any conditions entered on the register, such as an area of use limitation.
The Trademarks Registry has offices in Mumbai, Ahmadabad, Kolkata, New Delhi and Chennai.
Remedies for trademark infringement in India
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. They are:
- “An action for infringement” in case of a registered trademark
- “An action for passing off” in the case of an unregistered trademark
While the former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off of a registered trademark, a court may grant an injunction or monetary compensation for damages and loss of business, and may order the confiscation or destruction of infringing labels and tags.
Although the registration of a trademark is prima facie evidence of trademark validity, the registration cannot upstage a prior consistent user of a trademark, for the rule is “priority in adoption prevails over priority in registration.”
Successful plaintiffs are entitled to a wide range of remedies such as being awarded injunctions against further infringing or diluting use of the trademark. In trademark infringement suits, monetary relief may also be available, including: (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. Damages may be tripled upon showing of bad faith. In trademark dilution suits, damages are available only if the defendant willfully traded on the plaintiff’s goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief.
Legal requirements for trademark registration
The legal requirements to register a trademark are:
- The selected mark should be capable of being represented graphically (that is in the paper form)
- It should be capable of distinguishing the goods or services of one undertaking from those of others
- It should be used or proposed to be used to mark goods or services so as to indicate a connection in the course of trade between the goods or services and some persons have the right to use the mark with or without identity of that person
An application for trademark may be made on Form TM-1 with prescribed fee of Rs.2,500 at one of the five offices of the Trademarks Registry depending on the place where the applicant resides or has their principle place of business. The application will be examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and the examination report issued. If it is found to be acceptable then it is advertised in the Trademarks Journal to allow others to oppose the registration. If there is no opposition, or if the opposition is decided in favor of the applicant, then the mark is registered and a certificate of registration is issued.
Generally, it takes about one year to register a trademark in India. In cases where there are objections raised by a third party, the registration process may take up to two years.
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