Module 10

MODULE 10

LIFECYCLE OF A TRADEMARK

10.1 JOURNEY FROM APPLICATION TILL REGISTRATION

The process of trademark starts right from filing an application in the national office
and taking all the necessary steps required for registration. The process is not lengthy
or complex as such. Hence, it is rather easy for a proprietor to register or file an
application for registration.

There are two types of trademark registrations:
● National Registration
● International Registration

10.2 NATIONAL REGISTRATION

The process of national registration starts from filing an application. The question
which arises is - who can file an application for registration of trademark?

The application for registration of trademark can be filed by:
● Proprietor: Any person who claims to be the proprietor of a trademark by using it

or by proposing to use it can file for registration of trademark.
● Joint owners: In case of joint owners, the names of both the persons should be

mentioned in the application.
● An individual: Any individual not having any business can also file an application

for trademark and obtain registration of the trademark for any word or symbol.
● Partnership firm: In case of a partnership firm, the names of every partner should

be mentioned in the application since a partnership firm is not considered as a
separate legal entity. If any minor is also a partner, in that case the name of the
minor’s guardian should be mentioned in the application.
● Company: The application can be filed in the name of the company as a company
is an incorporated body having a separate legal entity.

● Trust or society: In case of trust or society, the application can be filed by the
chairman of the trust or by the secretary in case of a society.

10.2.1 Process of Registration:

The steps that are required to be taken for registration of trademark are as follows:

1. The first step in the registration is to decide how the proposed mark shall look.

2. The second step is to search the name or to make an overall search related to each
and every aspect of whether there is any similar mark registered or not compared to
the mark that the applicant is going to propose. The search should be a public search
in the records of Trade Marks Registry. An applicant should also try and conduct
market search as well as internet search.

3. The person applying for registration of the trademark needs to apply under Form
TM-A as prescribed under the latest Trademarks Rules 2017 along with the
prescribed fees. As per the new Rules, where the applicant is claiming use, he needs
to file an affidavit of use.

4. The applicant may choose to seek preliminary advice regarding the distinctiveness
of the mark from the Registrar of Trade mark by making a request in Form TM-M
along with the prescribed fee.

5. The applicant may choose to conduct a public search on the website of the Indian
Trade Marks Registry for the official report to ascertain whether any identical or
deceptively similar mark is pending registration.

6. The Registrar of Trademarks shall then allot an application number. In case the
application is accepted, then it shall, in future, become the trademark number.

7. The Registrar of Trademarks shall scrutinize the application and enter the data. In
case of device marks, the application is then sent for Vienna Codification. The
Registrar begins the process of examination of the application.

8. The Registrar shall check the application to see whether the following

requirements are met:
a. That application for registration of the trademark has been filed in
accordance with the requirements prescribed by the Trade Marks
Act 1999 and the Trade Marks Rules, 2017.
b. Whether there are any same or similar marks on record.
c. Whether the mark is descriptive of goods and/or services or is not
distinctive.
d. Whether any restriction, condition or limitation is required to be imposed.

9. The Registrar shall then issue an examination report and a search report citing
conflicting marks on record or else directly advertise the mark.

10. In case the application is accepted with no objections, then it shall be published in
the Trademark Journal.

11. In case the application is accepted but subject to some objections or restrictions,
the applicant is required to respond to the said objections in case they are raised in
the examination report within a period of one month from the issuance of the
examination report. The applicant may choose to respond to the objection or
remove the said objections. He/she may choose to abandon or withdraw the
application. A show cause hearing may also be put up for the applicant to respond
to the objections.

12. The Registrar shall then, on the basis of the written reply and/oral arguments at the
show cause hearing, determine whether the application shall be refused or accepted
with or without restrictions or limitation.

13. In case the application is rejected, then the applicant may choose to either file a
review or move the Intellectual Property Rights Appellate Board to appeal against
the order of the Registrar of Trademarks.

14. In case the application is accepted, the said mark is published in the Trademark
Journal. The said mark is thereafter required to be opposed by a third party within
four months from the date of publication. In case the mark is unopposed within
this stipulated time, then it shall proceed for registration as a trademark and the

application number shall become the trade mark registration number.

15. The trademark protection is required to be renewed after every 10 years.

16. The application for renewal of trade mark can be filed within a period of
twelve months before the expiry of the validity of the trademark.

17. In case a trade mark is registered but is not in use for five years from the
date of registration in India, then the trademark is vulnerable to be struck
off from the Register of Trademarks, if a rival in trade files
cancellation/rectification of the same.

18. In case an opposition is lodged by a third party, then the trademark shall
not be registered until the opposition proceedings are completed. In case
the third party files a notice of opposition to the application, the applicant
is required to respond to it within the stipulated time period prescribed by
the Act. In case the applicant does not respond by filing a counter
statement within two months of service of notice of opposition, the
application is said to be abandoned. During the opposition proceedings,
evidence by way of affidavits between the applicant and third
party/opponent are required to be exchanged and the matter is thereafter
put up for hearing. The time prescribed by the Act and the Rules for the
respective filing and exchanging of evidence is to be strictly adhered to. A
failure to adhere to the prescribed timelines adversely affects the matter-
either the opposition or the application is deemed to be abandoned as
mentioned above.

19. In case the opposition is allowed and the application is rejected, the
applicant has the option to either file a review or an appeal before the
Intellectual Property Appellate Board.

20. In case the application is accepted, then it shall proceed for registration
and the mark shall be registered as a trademark in the Register of
Trademark, with the application number being allotted as trademark
number. In this scenario, the opponent has the option to either file a review
or an appeal before the Intellectual Property Appellate Board.

10.2.2 Rights conferred after registration:
● Exclusive rights of usage like assignment and licensing.
● Relief in case of infringement in the form of injunctions and damages.
● Right to take action i.e. to approach the court for filing a suit.

10.3 EXAMINATION

The examiner of trademarks examines the application. It is first examined to ascertain
that the applicant has complied with all the procedural formalities. The trademarks
examiner may raise objections. The objections are further divided into two parts:

● Procedural Objection: The objections raised pertain to errors in filing the
application or if the goods and services are not falling under the applied class.

● Substantive Objection: Under this, the trademark examiner examines all the
relative (section 11) as well as absolute grounds (section 9) of refusal.

In case objections are raised, the applicant is required to submit an appropriate response
within one month of receipt of the examination report. If there is no objection, then the
mark shall be accepted and advertised.

10.3.1 Factors to be considered while deciding an application:
● Honest & concurrent use [Section 12]
● Absolute grounds for refusal of trademark registration [Section 9]
● Relative grounds for refusal of trademark registration [Section 11]
● Prohibition of refusal of names of chemical elements [Section 13]
● Name and representation of a living person or if the person died recently [Section

14]

10.4 INTERNATIONAL REGISTRATION

International registration encompasses the following steps:

1. The request application is required to be filed in the office of the trademark i.e. the
origin office.

2. The trademark officer sends the request application to the World Intellectual
Property Organisation (WIPO).

3. It goes through the procedure of examination and evidence is collected to check if
the trademark is issued to any other party.

4. After the enquiry and examination, the WIPO enters the request application in its
register.

5. The WIPO has its own international official gazette i.e. the WIPO gazette. It
publishes the application in the gazette.

6. The member nations have the autonomy to scrutinize the applications as per their
local laws and issue office action report/provisional refusal. Thereafter, the same
procedure of reply to the provisional refusal, show cause hearing, advertisement
and opposition is followed.

7. The validity of the trademark is for a period of ten years.
8. If international registration is given to a trademark, then the Registrar of trademark

of that origin country has to record in its register also.

10.4.1 Contents of an international application:

The international application form (MM2) must contain:1

● Name and address of party.
● The reproduction of applicant’s mark, which must be identical to the applicant’s

basic mark in India.
● A list of goods and services for which protection is sought, which must be fully

covered by those indicated in the applicant’s basic mark.

1 ‘The Madrid Protocol: A Route to Global Branding’ (January 2018) Intellectual Property India.
Available at
<http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PRO
TOCOL.pdf>

● The list of members of the Madrid Union in which protection for the mark is sought
(designated Contracting Parties).

These requirements are mandatory and have an impact on the date of the international
application. The international application must also contain:2
● An indication of the applicant’s entitlement to file (establishment or domicile in

India or Indian nationality).
● Trademark priority claim, if applicable.
● Name and address of the representative, if appointed.
● Number and date of the applicant’s basic mark at the India Trade Marks Registry.
● Indications of the mark (kind of mark, color claim if applicable).
● Description of the mark, if required.
● Transliteration of the mark, if applicable.
● Amount of the fees being paid and method of payment.

10.5 GROUNDS FOR REFUSAL

There are two categories of grounds for refusal - absolute grounds and relative grounds.
Absolute grounds are covered under section 9 while relative grounds are stated in
section 11 of the Trade Marks Act, 1999. There are certain other factors on which the
application can be rejected. These are honest and concurrent use and if the name of the
trademark is being used on a name of some chemical elements.

10.5.1 Absolute Grounds

Section 9 of the Trademarks Act 1999, states the absolute grounds for refusal of
trademark application. These are as follows:
● Marks having different meanings in different parts of India.
● Marks devoid of distinctiveness (not capable of distinguishing the goods or services

of one person from those of another person (section 9(1)(a)).

2 ibid.

● Marks which consist exclusively of marks or indications which may serve in trade
to designate the kind, quality, quantity, intended purpose, values, geographical
origin or the time of production of the goods or rendering of the service or other
characteristics of the goods or services (section 9(1)(b)).

● Marks which consist exclusively of marks or indications which have become

customary in the current language or in the bona fide and established practices of
the trade (section 9(1)(c)).
● Marks which are likely to hurt the religious beliefs of a section of citizens.
● Marks which are scandalous or obscene in nature.
● Marks prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950.
● Marks consisting exclusively of the shape of goods which results from the nature
of the goods themselves; or the shape of goods which is necessary to obtain a
technical result; or the shape which gives substantial value to the goods (section
9(3)).
● Marks which deceive the public or cause confusion.

10.5.2 Relative Grounds

Section 11 of the Act talks about the relative grounds of refusal which include:
● Identity or similarity with earlier trademarks or similar goods or services.
● Use of generic words i.e. scientific words.
● Similarity with well-known trademarks.

In Amritdhara Pharmacy v. Satyadeo Gupta,3 the respondent had applied for
registration of the trade name of a medicinal preparation “Lakshmandhara” since 1923.
The respondent stated that the product was mainly sold in the area of Uttar Pradesh.
The appellant opposed the registration of the word as he was using a similar word
“Amritdhara” since 1901 and the respondent’s trade name may cause deception in the
mind of a prudent consumer. The Supreme Court stated that the words Amritdhara and
Lakshmandhara are similar and thus Lakshmandhara was not given the trademark.

3 AIR 1963 SC 449.

Yahoo Inc v. Feroz Nadiadwala4: The suit was instituted by Yahoo Inc in the nature of
a quia timet action. The plaintiff apprehended that the defendants were going ahead
with the release of the cinematographic film titled "YAHOO", which was an
infringement of the plaintiff's well-known trademark and also amounted to an act of
passing off by the defendants. It was held that the plaintiff was right in their contention
that YAHOO! had become a household name in India and had acquired the status of a
well known trademark by virtue of long and continuous use. The defendant by making
a film under the title YAHOO! would cause the members of the public to believe that
the defendants’ production is in some way endorsed, sponsored and associated with the
plaintiff.

10.5.3 Honest and concurrent use

It is defined under section 12 of the Act. It states:
“In the case of honest concurrent use or of other special circumstance 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 mark 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.”

10.5.3.1 Essentials of honest and concurrent use:
● Honesty of concurrent use i.e. honest intention for a long period.
● Degree of confusion i.e. there should be some similarity between the words which

creates a confusion in the minds of the consumers.
● Amount of inconvenience to the general public.

Kores (India) Limited v. Khoday Eshwarsa & Son:5 Registration of trademark was
allowed on the ground of honest and concurrent use.

4 2014
5 1985 (1) BomCR 423.

10.6 OFFENCES UNDER TRADEMARK LAW

Apart from infringement, there are certain acts which are considered as an offence
under the trademark law in India. The offences described under the Act are as under:

● Section 103(a): Falsifying a trademark.
● Section 103(b): Falsely applying for trademark of any good or service.
● Section 103(c): Making or possessing any instrument for the purpose of falsifying

a trademark.
● Section 103(d): Applying false trade description to goods or services.
● Section 103(e): Applying false indication of country of origin.
● Section 103(f): Tampering with an indication of origin already applied to goods;
● Section 104: Selling goods or providing services to which false trade mark or false

trade description is applied.
● Section 106:Removing piece goods etc, contrary to section 81 shall be punishable

with fine.
● Section 107: Falsely representing a trademark as registered trademark shall be

punishable with imprisonment, or with fine, or with both.
● Section 108: Improperly describing a place of business as connected with the Trade

Mark office shall be punishable with imprisonment or fine or both.
● Section 109: Falsification of entries in the register shall be punishable with

imprisonment or fine or both.