Trademarks: Registration and its restrictions (Part 3)

This article is the final part of a three-part series which explains the registration process, the restrictions on protection and use of the mark, while discussing whether registration is mandatory and what are common law rights attached to a trademark.

In Part 2 of the series (link here), we discussed the value of a trademark, what is a trademark infringement and its consequences.

It is important for one to understand the actual process of registration of trademark and the various steps involved. After the registration, the extent of trademark protection and its restrictions are vital details all lawyers and business owners should know. In this last part of our trademark series, we answer this final leg of questions.

Q. What is the legal sanction behind the concept of trademarks?

The Trade Marks Act, 1999 (“the Act”) is the singular statute that lays down the law relating to trademarks in India. The Act read along with the Trade Mark Rules, 2017 (“the Rules”) form the legal framework for trademarks.
 

Q. How to apply for the registration of a trademark?

The broad steps to registering a trademark are given below –

  1. Our expert Akanksha Mathur states that the first step is to have a discussion with the Applicant/client and get the basic information and explain to him/her the process, cost and documentary requirements. In case the Applicant is filing the trademark himself, this step will not be required.
     
  2. Adopt a mark and identify the Class under which it will fall based on the Nice Classification of goods and services, the latest edition of which is available at http://web2.wipo.int/classifications/nice/nclpub/en/fr/home.xhtml.
     
  3. Identify the trademark office based on the Applicant’s address (State). There are 5 offices – Ahmedabad, Delhi, Kolkata, Mumbai and Chennai. In case of an online application, the office is automatically selected based on the Applicant’s State or the State where the Applicant’s attorney is situated, in the case of a foreign applicant.
     
  4.  Fill in the rest of the details such as date of use along with the Affidavit proving such use, details of Applicant and description of the goods/services. Seek documents evidencing the Applicant’s use of the mark and a Power of Attorney in your favour to act on their behalf unless one files the mark himself without an attorney.
     
  5. The mark will then be examined by the Trade Marks Registry for compliance with Section 9 and 11 of the Act. If the Registry believes that the mark may be refused based on the two Sections, they issue an Examination Report. If they find no grounds for refusal, they proceed to publish the mark in the Trade Marks Journal.
     
  6. If an Examination Report is generated, the Applicant has 1 month from the date of its service to file a Reply to this Examination Report, to overcome the Objections raised. If the Registry is convinced, the mark will be published in the Trade Marks Journal. If not, the Registry may call the party for a hearing to submit oral arguments in favour of registration of the mark.
     
  7. For a period of 4 months when the mark is published in the Journal, any interested party may raise Oppositions to the registration of the mark. If the Applicant is able to overcome the Opposition, the mark proceeds to registration or if there were no third-party Oppositions raised, the mark proceeds to registration. If the mark is opposed, the opposition proceedings are initiated and until it is concluded, the mark cannot proceed to registration.
     
  8. A Registration Certificate (soft copy) issued by the Registry acts as proof of registration. The mark will be valid for 10 years from the date of application (not from the date of registration) and may be renewed every 10 years.

Q. Restrictions on the protection offered by trademarks.

The Act offers statutory protection for the trademark only within the territory of India. Further, the trademark is protected only in relation to the goods/services over which it is used in trade. The goods and services are divided into 45 Classes internationally under Nice Classification and the Applicant should identify the Class under which his trade falls and register under the same. 

E.g. Clothing – Class 25, Pharma – Class 5, Restaurant – Class 43. With a registration for the mark ‘NATRAJ’ for a restaurant, the Applicant cannot stop another from using ‘NATRAJ’ on furniture. 

The above rule has a few exceptions, two of which are explained below –

  • Cross-border reputation – Trademarks are territorial but if an international brand with no operations in India is known to a section of the society, such mark gains protection in India.

E.g. Let’s assume that the famous American retailer ‘Walmart’ is unregistered in India. While they may not have operations in India, the very fact that they are known to a section of the public will give them ground to stop any third-party retailer from adopting their name.

  • Well-known marks – A brand with high sales, reputation and advertising expenses, known to a large part of the society can get protection across all 45 Classes. E.g. ‘TATA’ is recognised a well-known mark in India and they can challenge usage of their mark in Classes they do not have a business also.

Q. What are the restrictions on the use of a trademark?

 There are basically three types of restrictions/conditions imposed on the use of a trademark:

  1. Representation Restriction: Certain marks may be restricted by the Registry to the representation of the trademark as a whole. Akanksha believes that such restriction does not hold weight in light of Section 17 of the Act which specifically provides that upon registration, the registered proprietor is granted the exclusive right to use the trademark as a whole. E.g. Owner of the logo mark  (assuming that only a logo mark is applied) has rights to only this representation as a whole and not the word COACH itself or any other parts independently.
     
  2. Geographical trademark: Some marks are restricted to be used in specific geographical territories, says Akanksha. An example of this would be the HALDIRAM trademark which was used by two different proprietors from 2004 till 2013: one in the state of West Bengal and the other in rest of India.
     
  3. Generic words as part of the trademark: To avoid monopoly over generic words such as SMARTPHONE or WORLD, the Registry would ask the Applicant to disclaim an exclusive right to such words. E.g. For a mark TITAN WORLD, the Trade Mark Registry would seek the Applicant to not claim exclusive rights over the word WORLD. Akanksha says “If we can reasonably suspect that such a condition may be imposed, then it is worthwhile to voluntarily disclaim such usage in the application in order to expedite the process.
     
  4. Class restriction: A mark, when registered for a particular item within a Class, can be enforced for those specific items and only within that Class. Any other person is free to use the mark for items other than those stated in the Class or in any other Class  (except in allied goods or services). E.g. Marvel Studios have registered the mark MARVEL under Class 41 for entertainment services including TV series and movies. However, there can exist a simultaneous registration for MARVEL, owned by another proprietor, for jewellery, in Class 1

Q. Can a worldwide trademark be applied?

No. However, under Madrid Protocol, Applicant can use his India application on basis of which he can file an international application choosing different countries in which he wishes to seek protection. Each of the countries’ trademark offices then process the mark independently. This conserves the initial time taken to apply for the mark and ensures a single date of application. The drawback is that if the original India application is rejected by the Indian Trade Mark Registry, the entire application will be rejected across all countries.

Q. Is it mandatory to register a trademark?

No, an owner of an unregistered trademark has common law rights called passing off. But, registration provides an additional right to the Applicant – statutory rights where the owner of a registered trademark can sue for trademark infringement. It is also a prima facie evidence of his ownership over the mark. Another small advantage in registering a trademark is that it acts as an estoppel/deterrent to any future adopters of an identical/similar mark in identical/similar goods/services

Q. What are the common law rights of an unregistered trademark owner?

Any unregistered user of a trademark, provided he is the prior user of the mark in relation to certain goods/services, can stop a latter user from using it by suing him for passing off. Prior user has better rights, regardless of registration of the mark. However, the court will first seek proof from the prior unregistered user to establish his rights over the mark before taking any action against the latter user. 

Conclusion

Registration and enforcement of a trademark are one of the main activities a trademark attorney would engage in and for aspiring or entrant lawyers, it is vital that they understand both prosecution and enforcement of trademarks. 

Endnote: We hope this article series is helpful to all those seeking an overview of the trademark law in India. 

DISCLAIMER: The information provided in this article is for educational purpose only. The same cannot be construed as legal advice.

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