By SHREEJIT MITRA, MANIKCHAND PAHADE LAW COLLEGE / Dr. BABASAHEB AMBEDKAR MARATHWADA UNIVERSITY
INTRODUCTION
Section 2(m) of the Trademarks Act, 1999 defines a “mark” as any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination thereof.
A “trademark” is described as a visual mark under Section 2(zb), Trademark Act, 1999 that sets one person's goods or services apart from another, including the shape, packaging, and colour scheme of the items. A trademark can be anything, including a name or logo if it distinguishes the applicant's goods or services.
For Example:
A trademark is any
Word (PEPSI, COCO COLA, PEPSODENT),
Name (RAYMOND VEIL, CHRISTIAN LOUBOUTIN),
Surname (TATA, BATA, BAJAJ),
Signature (LOUIS PHILIPPE),
Letters (BMW, IBM, HDFC); etc.
TYPES OF TRADEMARK
Trademarks come in various forms, categorized by their characteristics. These include:
1. Word Marks: Comprising words or letters, such as brand names like “Apple” or “Google”.
2. Design Marks (Logo Marks): Consisting of a specific design, logo, or graphical element, as seen in the Nike “swoosh” symbol.
3. Combined Marks: Involving both words and a design element, like the Coca-Cola logo.
4. Slogan Marks: Protecting distinctive slogans or taglines associated with a brand, for instance, Nike's “Just Do It.”
5. Sound Marks: Safeguarding specific sounds linked to a product or service, such as the MGM lion's roar.
6. Colour Marks: Preserving specific colours associated with a brand, like the brown colour of UPS delivery trucks.
7. Shape Marks: Safeguarding the unique shape or configuration of a product or its packaging, as seen in the Coca-Cola bottle.
8. Certification Marks: Indicating that goods or services meet specific standards or qualifications, exemplified by the “UL” mark for electrical products.
9. Collective Marks: Used by members of a group or organization to identify themselves with particular qualities or characteristics.
10. Trade Dress: Safeguarding the overall appearance and image of a product, including packaging and design.
11. Service Marks: Similar to trademarks, protecting symbols, names, or identifiers associated with services rather than goods.
These classifications are not exclusive, and a single trademark may fall into multiple categories based on its characteristics and elements associated with the brand. The choice of trademark type depends on factors like the nature of the business and the distinctive elements of the brand.
TRADEMARK APPLICATION
A trademark application is a formal request submitted to a trademark office for the registration of a specific mark, symbol, or logo associated with goods or services. The application process involves adherence to relevant legal provisions, ensuring that the mark receives legal protection. Below is a concise overview of the trademark application process along with pertinent provisions;
Trademark Application Process:
1. Pre-filing Analysis:
Before applying, it's advisable to conduct a comprehensive search to ensure the uniqueness and availability of the proposed trademark.
2. Application Filing: Submit a trademark application to the appropriate trademark office, providing details about the mark, the goods or services it represents, and the applicant's information.
3. Examination: The trademark office reviews the application to ascertain compliance with legal requirements, including distinctiveness and conformity with the classification of goods or services.
4. Publication: If the application passes the examination, it is published in the official gazette to allow for opposition by third parties.
5. Opposition: Interested parties may oppose the registration within a stipulated period, typically on grounds of prior rights or lack of distinctiveness.
6. Registration: In the absence of opposition or successful resolution of disputes, the trademark proceeds to registration, conferring exclusive rights to the owner.
Relevant Provisions (Based on Indian Law - Trademarks Act, 1999):
Section 18 - Application for Registration:
Outlines the procedure for filing a trademark application, specifying the required details.
Section 9 - Absolute Grounds for Refusal:
Enumerates grounds on which the Registrar may reject an application, including lack of distinctiveness.
Section 11 - Relative Grounds for Refusal:
Deals with opposition based on existing conflicting rights.
Section 20 - Advertisement of Application:
Specifies the publication of the application after examination.
Section 21 - Opposition to Registration:
Provides the mechanism for third parties to oppose a trademark application.
Section 23 - Registration of Trademarks:
Details the conditions for the registration of trademarks after successful completion of the application process.
Applicants must navigate these provisions carefully to ensure a smooth and successful trademark registration process, protecting their brand identity in the market.
CLASSIFICATION OF TRADEMARK APPLICATION
The International (Nice) Classification of Goods and Services is a trademark registration framework originating from the Nice Agreement in 1957. It has undergone refinements in Stockholm, Geneva, and India. The current version, adopted by the Indian trademark office, comprises 45 classes, dividing goods into classes 1 to 34 and services into classes 35 to 45. Each class has a comprehensive “Class Header”.
ADVERTISEMENT OF TRADEMARK APPLICATION
Rule 41, Trademark Rules, 2017: Request to Registrar for particulars of advertisement of a trademark
The subsequent phase involves the promotion of the trademark. This promotion can occur either after a hearing where the trademark has been approved, directly following the examination stage if the Registrar is persuaded by the arguments presented in the examination response, or in cases where the Registrar is convinced that there are no valid objections, even at the initial examination stage. In such instances, the mark may be directly ordered for advertisement without the necessity of filing a response to an examination report. This is more likely to occur when the mark is a newly coined word with no similar existing marks.
The advertisement of the mark takes place in the Trademark Journal, commonly referred to as TMJ. The Trademark Journal is released on a weekly basis, classifying trademarks systematically every Monday by the Trademark Office.
Form TM-M is used for the request to the registrar for the advertisement of a trademark as mentioned in Rule 41.
OPPOSITION TO REGISTRATION OF TRADEMARK
Rule 42, Trademark Rules, 2017: Notice of Opposition
Within 4 months after the publication/advertisement of the mark in the Trademarks Journal, any person can oppose the mark by filing a Notice of Opposition on the prescribed Form TM-O along with the prescribed fee of INR 2700. Where a notice of opposition has been filed in respect of a single trademark, however for different classes of goods and services, it shall incur the fee in respect of each class to which the opposition is filed.
The Notice of Opposition primarily comprises the following:
The application number against which opposition is sought.
An indication of the goods or services listed in the trademark application against which opposition is sought.
The name of the applicant for the trademark.
If the opposition is entered by the proprietor of the earlier trademark, his name and address along with details of his trademark/rights.
If the opposing party has no place of business in India, the name of the opponents and their address for service in India.
If the opposition is based on an earlier trademark, a statement to that effect and an indication of the status, application number and filing date, including the priority date of the earlier trademark.
If the earlier trademark is a well-known mark, a description to that effect along with the details of the country or countries in which the earlier trademark is recognized to be well known along with details of the earlier mark.
The grounds on which the opposition is based.
The counter-statement shall be verified at the foot by the opponent or by his duly authorized agent who shall specifically state, referring to the numbered paragraphs of the notice of opposition, what he verifies of his knowledge and what he verifies upon information received and believed to be true.
The verification shall be signed by the person making it and shall state the date on which and the place at which it was signed.
The trademark applicant will typically get a copy of the notice of opposition from the registrar within three months of the date of receipt, following which the opposition will proceed with submitting a counter statement. This is subject to examination and compliance with all required formalities.
Rule 44, Trademark Rules, 2017: Counter-Statement
Within two months after receiving the notice of objection, the applicant must file a counterstatement or reply to it using Form TM-O and pay the prescribed cost of INR 2700. The cost must be paid for each class to which a counter statement is being filed, even for counter statements.
Generally, the counterargument should include the following:
1. Describe the facts, if any that the applicant has acknowledged are included in the notice of opposition.
2. A response to each of the grounds stated in the notice of opposition, broken down into paragraphs.
3. The opponent or his legally authorized representative must verify the counterstatement at the bottom. They must explicitly state, concerning the notice of opposition's numbered paragraphs, what they have personally verified and what they have verified based on information they have received and believe to be accurate.
4. The verification must be signed by the individual doing it and must include the time and location of the signature.
Again, the registrar will evaluate the counter-statement and, if all procedures are completed, serve a copy on the opponent, usually within two months of the date of receipt.
The following adjustments were made to the Trademark Rules 2017 to speed up the opposition process:
1. Based on the notice of objection posted to the Trademark Registry's website, the applicant may submit a counterstatement. In this situation, the register waives the need to provide the applicant with a copy of the notice of objection.
2. The option to submit a counterstatement by submitting an extension has been eliminated.
Consequently, the applicant's trademark is considered abandoned for non-prosecution if it does not submit a counterstatement within two months of receiving notice of the opposition. Alternatively, the opposition will go on to the evidence stage if the applicant files the counterstatement.
Rule 45, Trademark Rule, 2017: Evidence in Support of Opposition
Within a span of two months subsequent to the service of a duplicate of the counter statement, the adversary is obligated to proffer substantiating evidence for the opposition, presented in the form of an Affidavit pursuant to Rule 45 to fortify the case. Duplicates of said evidence, inclusive of exhibits, are to be tendered before the registrar, concurrently providing a copy to the applicant. Alternatively, the adversary possesses the option to abstain from filing such an Affidavit under Rule 45 and exclusively hinge upon the facts articulated in the Notice of Opposition. Nevertheless, this intent must be communicated in writing to both the Registrar and the applicant within the stipulated timeframe.
Should the adversary neglect to furnish such evidentiary support for the Opposition or fail to submit a waiver letter within the designated two-month period, the opposition shall be deemed abandoned.
Rule 46, Trademark rule, 2017: Evidence in Support of Application
Within the span of two months from the reception of the Affidavit and substantiating evidence pursuant to Rule 45, or upon receipt of correspondence signifying the renunciation of the right to furnish said Affidavit and evidence by the opposing party, the petitioner is mandated to present evidence supporting the application. This substantiation shall take the form of an Affidavit in accordance with Rule 46. Duplicates of the provided evidence, inclusive of any accompanying exhibits, must be tendered before the registrar, accompanied by dispatching a corresponding copy to the adversary.
Alternatively, the petitioner retains the prerogative to forgo the submission of the aforementioned Affidavit and evidence under Rule 46. Instead, they may opt to solely lean on the facts articulated in the counter statement or on evidence previously proffered in relation to the application. This choice can be effectuated by communicating the decision in writing to both the registrar and the opposing party within the stipulated timeframe.
Failure on the part of the petitioner to furnish such evidentiary support for the application or a waiver declaration within the prescribed two-month timeframe shall result in the automatic presumption of the abandonment of their trademark application.
Rule 50, Trademark rule, 2017: Hearing and Decision
The Registrar, after the receipt of evidence by both parties and further evidence of the opposing party, will give notice to both parties of the first date of hearing. If the opposing party is not present on the hearing date, the opposition will be dismissed, and the Registrar will register the trademark.
If the applicant is not present on the hearing date, the registration application will be treated as abandoned and dismissed. The Registrar will consider the written arguments submitted by both parties to the proceeding.
After hearing both parties and considering the evidence submitted by them, the Registrar will decide whether to proceed with the trademark registration or reject the trademark registration application. The decision of the Registrar will be communicated to both parties in writing at the address provided by them.
Rule 51, Trademark rule, 2017: Security of Costs
The security for costs which the Registrar may require under sub-section (6) of section 21 may be fixed at any amount which he may consider proper, and such amount may be further enhanced by him at any stage in the opposition proceedings.
CONCLUSION
In summation, the opposition to the registration of a trademark constitutes a pivotal procedural undertaking designed to safeguard the vested interests of extant rights proprietors and preserve the sanctity of the trademark framework. By partaking in opposition proceedings, one endeavors to forestall the formal registration of a mark that holds the potential for engendering confusion, dilution, or infringement upon pre-established trademarks. This process serves as an indispensable mechanism for upholding the singularity and exclusivity of trademarks, thereby contributing substantively to the establishment of a just and competitive commercial milieu. Although oppositions necessitate meticulous scrutiny of legal tenets and evidentiary facets, they assume a paramount role in ensuring that only meritorious trademarks attain formal registration, thereby nurturing a resilient and equitable intellectual property milieu.
Simple language Explanation,easy to understand...