Registration of Trademarks
What is meant by the term ”registered trademark”?
The initial registration of a trademark shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.
Conditions for registration of Trade Marks
Sections 9- 17 of Trademark Act of 1999, deal with the conditions, under which a Trade Mark can be refused registration. If an application for the registration of a Trade Mark denotes any of the characteristics, mentioned under the following categories, it will not be registered as a Trade Mark. These are the most important sections, which need to be considered for registering a mark.
The sections are as follows:
Section – 9- Absolute grounds for refusal of registration
The mark shall not be registered as a trade mark if:
- It is not distinct in nature. It should possess the quality of distinctiveness i.e. it should be able to differentiate between the goods of one person from those of another.
- It describes the quality, kind, quantity, intended purpose, values, geographical origin of the goods, which are being marketed under that name. e.g, “Yeast” cannot be a good trade mark for a bread manufacturer.
- It consists of any mark or indication that is used in common parlance.
- It is likely to cause confusion amongst the public.
- It is likely to hurt the religious sentiments of the public
- It comprises of obscene or scandalous matter
- It is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- It consists of any shape, that is directly related to the goods or goods, which are necessary to obtain a technical result or which gives a substantial value to the goods
However, a trade mark shall not be refused registration under this section if it has already achieved a distinctive character as a result of long usage, prior to an application for registration. A well known trade mark would also not be refused registration under this section.
Section – 10 – Limitation as to colour
The new Act now includes the protection for colour marks. It includes the combination of colors and shapes in the definition of trade marks. However, the colour marks should be distinct enough to associate the said combination with the goods being sold.
Colgate Palmolive Company & Another v. Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 ( Delhi)
Section – 11 – Relative grounds for refusal of registration
A Trade Mark cannot be registered if it is identical to an earlier mark and is likely to cause confusion, due to its similarity with such an earlier mark.
Also, a trade mark cannot be registered if it is similar to a well known trade mark, defined u/s 2 (zg), because it is most likely to cause confusion amongst the public at large, since they would associate the product with the proprietor of the well known trade mark. Such a mark would also be refused registration under all classes of goods, under which the well known mark is not registered.
This section defines the factors that must be considered in assessing whether a mark is well known. These specifically indicate that in such an assessment the fact that a mark is not registered or has been applied for registration in India or used in India would not be significant.
Section – 12 – Registration in the case of honest concurrent use, etc
In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
In such a case, the Registrar may grant territorial rights to the two proprietors so that they can co-exist without interfering in the business of the other. However, if they exceed their territorial limitations then a suit of infringement can lie against them.
Section – 13 – Prohibition of registration of names of chemical elements or international non-proprietary names
International non-proprietary names, declared by the World Health Organisation or names which are deceptively similar to such names, shall not be registered as trade marks.
Section -14 – Use of names and representations of living persons or persons recently dead
Where an application is made for the registration of a trade mark, which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.
Trade Marks in Series
Section – 15 – Registration of parts of trade marks and of trade marks as a series
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark.
(3) Where a person, claiming to be the proprietor of several trade marks in respect of the same or similar goods or services or description of goods or description of services, which, while resembling each other in the material particulars thereof, yet differ in respect of -
(a) Statement of the goods or services in relation to which they are respectively used or proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character, which does not substantially affect the identity of the trade mark; or
(d) Colour, seeks to register those trade marks, they may be registered as a series in one registration.
This section provides that if a proprietor of a registered trade mark wishes to claim the exclusive rights of use to any part of the said mark, he shall be entitled to apply for registration of the whole mark as well as parts of the mark as separate trade marks.
Associated Trade Marks
Section 16 – Registration of trade marks as associated trade marks
(1) Where a trade mark, which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trade marks shall be entered on the register as associated trade marks.
(2) Where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration in the name of the same proprietor, in respect of goods and in respect of services which are associated with those goods or goods of that description and with those services or services of that description, sub-section (1) shall apply as it applies as where there is an identity or near resemblance of marks that are registered, or are the subject of applications for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services.
(3) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section (1) of section 15, registered as separate trade marks in the name of the same proprietor, they shall be deemed to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be deemed to be, and shall be registered as, associated trade marks.
(5) On application, made in the prescribed manner by the registered proprietor of two or more trade marks, registered as associated trade marks, the Registrar may dissolve the association as respects any of them if he is satisfied that there would be no likelihood of deception or confusion being caused if that trade mark were used by any other person in relation to any of the goods or services or both, in respect of which it is registered, and may amend the register accordingly.
Section 17 of the Act explains the meaning of Associated Trade Marks. It says that when two marks of the same proprietor are registered or subject of an application for registration, the Registrar may call upon the registration of the marks to be entered in the register as associated trade marks. This is done to avoid confusion and deception if the marks are used by any other person other than the proprietor of the marks.
Section – 17 – Effect of registration of parts of a mark
When a trademark contains any part, which is common to trade or is of a non-distinctive character and the same has not been registered separately by the proprietor, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.
Some relevant points:
Duration of Trademarks: Section 25 of the Trademarks Act 1999 provides that the trade mark registered will be in force for 10 years and can be renewed for another 10 years after the original registration has expired. The renewal shall be subject to an application and renewal fees in prescribed manner.
Removal of Trademark: If the required conditions are not fulfilled, the registered trade mark will be removed from the register (Section 25 (3))
Restoration: Where a trade mark has been removed from the register for non-payment of prescribed fees, the Registrar shall, after six months & within one year from the expiration of the last registration of the trademark, on receipt of an application form & prescribed fee, restore the trade mark to the register for a period of 10 years.
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