Trademark Registration in India: Process, Benefits and Legal Insights

What is a Trademark?

A trademark is a distinctive sign, symbol, logo, word, phrase, or combination of these attributes that distinguishes the goods and services of one entity from the others. Trademarks play a crucial role in commerce by protecting the goodwill and reputation of businesses and ensuring consumers can make informed choices about the products or services they purchase.

Who Can file for trademark?

A trademark can be filed by any individual or a legal entity such as startups, small businesses, partnerships, non-profit organisations, government entities, companies, non-government organisations, etc. A foreign national or a foreign entity is also eligible to file a trademark application in India.

Eligibility for Trademark Protection

To be eligible for trademark protection, certain features must be met:

• Distinctiveness: The mark must be capable of distinguishing the goods or services of one entity from those of others.
• Non-descriptive: The mark should not be descriptive of the goods or services.
• Non-deceptive: The mark must not be deceptive or misleading.
• Not conflicting with existing trademarks: The mark should not be identical or similar to an existing registered trademark.
• Not prohibited by law: The mark must not be prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Benefits of Trademark Protection:

Trademark protection encompasses several essential features that safeguard the rights and interests of trademark owners such as:

• Exclusive Rights: Trademark protection grants the owner exclusive rights to use the mark in connection with the specified goods or services within the jurisdiction where it is registered.
• Brand Recognition: Trademark protection uniquely recognises and distinguishes a brand’s products and services.
• Legal Protection: A registered trademark gets legal protection against unauthorised use of the mark.
• Defence against Counterfeiting: Trademark protection also combats counterfeiting, which involves the unauthorised use of the mark on counterfeit goods.
• Assignment and Licensing: A registered trademark owner has the right to transfer ownership through license or assignment.

How to apply for a Trademark in India?

Trademark registration in India operates under the the Trademarks Act, 1999. The Act not only grants exclusive rights to the owner of a trademark, but also acts as a shield against unauthorised usage, dilution, or infringement of the mark.

Steps to be followed for trademark registration in India:

1. Trademark Classification: All the products and services are divided into 45 classes by the trademark registry. Trademark classification helps one to select the correct class under which a product or service falls.
2. Trademark Search: Conducting a comprehensive trademark search ensures the availability and distinctiveness of the proposed mark. This search identifies conflicts, minimising the risk of objections or refusals.Trademark search can be done by accessing https://tmrsearch.ipindia.gov.in/tmrpublicsearch.
3. Trademark Application Filing: Trademark application can be filed either online or offline by filing the TM-A Form. The fee for filing a trademark application varies for every entity.
   - For an Individual/Startup/Small entity the fee for physical application is INR 5000 and for online application, the fee is INR 4500.
   - For all other cases the fee for the physical application is INR 10,000 and for the online application is INR 9000.
   ~If a trademark is already in use, an affidavit and proof of prior use must be submitted.
4. Examination: After filing, the trademark office examines the application to ensure compliance with statutory requirements. This includes assessing the distinctiveness of the mark, verifying the accuracy of application details, and conducting searches for conflicting marks.
5. Objections (If any): Objection occurs during trademark application examination. The Trademark examiner reviews your application and submits an examination report highlighting any discrepancies. If unresolved, a hearing may be scheduled, after which the Registrar decides whether to accept or reject the application.
6. Reply to Examination Report: If an examination report is issued by the examiner, a reply is to be filed by the applicant within 30 days from the date of receipt of the examination report.
7. Hearing: After submitting the reply to the examination report, the examiner may accept or reject the application. If not satisfied, a hearing notice is issued, requiring the applicant to present arguments for registration.
8. Advertisement in Trademark Journal: If the application passes the examination, it is published in the official gazette for 4 months, allowing third parties to file oppositions.
9. Opposition (If any): Opposition arises when a third party challenges a trademark's registration post-publication. It involves filing a notice of opposition within four months, followed by a counter statement from the applicant within two months. Both parties submit evidence, leading to a hearing where arguments are presented, and the Registrar makes a decision. An Opposition can be filed by filing Form TM-O on paying a fee of INR 3000 (for physical filing) or INR 2700 (for e-filing).
10. Registration: If no opposition is filed or if the opposition proceedings are resolved in favour of the applicant, the trademark office proceeds to register the mark and a trademark certificate is issued in favour of the Applicant.
11. Renewal and Maintenance: Trademark registrations are typically valid for a specific period, usually ten years, after which they must be renewed to maintain protection. Trademark renewal can be filed by filing form TM-R and paying a fee of INR 10,000 (for physical filing) or INR 9000 (for e-filing).

Grounds for Refusal

In India, trademark applications may face refusal on various grounds, reflecting the statutory requirements outlined in the Trademarks Act, 1999, and Trademark Rules, 2003. Broadly, a trademark application can be refused on the following grounds:

1. Absolute Grounds for refusal (Section 9 of Trademarks Act):
Absolute grounds for refusal aim to maintain the integrity of the trademark system by ensuring that registered marks possess distinctive character, are not deceptive or offensive and do not impede competition or public interests.
i. Lack of Distinctiveness: Marks lacking distinctive character and failing to differentiate one trader's goods or services from others may be refused registration. This includes marks common to the trade, descriptive of the goods or services, or lacking in originality.
ii. Descriptive Marks: Marks that merely describe the characteristics, quality, quantity, intended purpose, or geographical origin of the goods or services may be refused registration.
iii. Generic Marks: Marks that consist of common or generic terms that denote the common name of the goods or services in question are ineligible for trademark protection.
iv. Deceptive Marks: Marks that are likely to deceive or cause confusion among consumers regarding the nature, quality, or origin of the goods or services may be refused registration.
v. Marks Contrary to Public Policy or Morality: Marks that are scandalous, offensive, obscene, or violate public order, morality, or religious sentiments may be refused registration on grounds of public policy.
vi. Shape of Goods Necessary to Obtain a Technical Result: Marks consisting exclusively of the shape of goods necessary to obtain a technical result, or that gives substantial value to the goods, may be refused registration.
vii. Shape Mark of Goods Which Results from the Nature of the Goods Themselves: Marks consisting exclusively of the shape of goods that results from the nature of the goods themselves, or that is necessary to obtain a specific technical result, may be refused registration.
- In the leading case of M/s. Nandhini Deluxe vs M/s. Karnataka co-operative milk producer’s federation Ltd. it was held that the registration of similar or identical trademarks (NANDHINI v/s NANDINI) for the similar class of goods is allowed only when the goods prima facie are not similar or identical.

2. Relative Grounds for refusal (Section 11 of Trademarks Act):
Relative grounds for refusal aim to protect the interests of existing trademark owners and prevent confusion or dilution of their rights.
i. Identical or Similar Marks for Similar Goods/Services: A trademark may be refused registration if it is identical or similar to an earlier trademark already registered or applied for in respect of similar goods or services.
ii. Likelihood of Confusion: If the proposed mark is likely to cause confusion with an earlier trademark due to its similarity in sound, appearance, or meaning, it may be refused registration.
iii. Well-Known Marks: Trademarks that are well-known in India or internationally enjoy broader protection against similar or identical marks for unrelated goods or services. A trademark application may be refused if it conflicts with a well-known mark, even if the goods or services are different. Marks that are identical or similar to trademarks with a reputation in India may be refused registration if their use would take unfair advantage of the distinctive character or reputation of an earlier existing trademark.
v. Conflict with Geographical Indications: If the proposed mark conflicts with a registered geographical indication (GI) or a pending GI application, it may be refused registration.
vi. Conflict with Earlier Rights: Trademark applications may be refused if they conflict with earlier rights, such as prior trademark registrations, common law trademarks, or rights arising from prior use in India.
- In the leading case of F.Hoffman La Roche & Co Ltd. vs. Geoffrey Manners and Co. Pvt. Ltd. it was held that a mark must be compared as a whole to ascertain if the proposed trademark will cause deception or confusion in the minds of the persons accustomed to the use of the existing trademark.

Conclusion

Trademark registration is crucial for businesses to protect their brand identity and prevent unauthorised use of their marks. Awareness of the eligibility, process, and handling of opposition or objection ensures a smooth registration. Staying informed about the grounds for refusal and addressing them proactively can help protect one's trademark and business interests.

References:

1. Trademarks Act, 1999 Act No. 47 of Year 1999 dated 30th. December, 1999
2. Trademark Rules, 2017
3. M/s. Nandhini Deluxe vs M/s. Karnataka co-operative milk producer’s federation Ltd. 2018 SCC Online SC 741, (2018) 9 SCC 183
4. F.Hoffman La Roche & Co Ltd. vs. Geoffrey Manners and Co. Pvt. Ltd. (1969) 2 SCC 716
5. Md Shoaib, Volume IV Issue III, IJLLR A Study On The Effect Of Non-Use Of Trademarks In India, (2022), https://www.ijllr.com/post/a-study-on-the-effect-of-non-use-of-trademarks-in-india