INDIAN TRADEMARK PRACTICES (CGPDTM)

By

SUBASANI.P

Examiner of Trademarks,

Chennai

Legal set up

• The Trade Marks Registry was established under the Trade Marks Act 1940.

• At present, it functions under the Trade Marks Act 1999 & The Trade Marks Rules 2002.

• The Trade Marks (Amendment) Act 2010, has been passed and published in the official Gazette of the Government of India.

• The Trade Marks Rules 2002 has been amended from time to time; and it is being replaced with the Trade Marks Rules 2016, the draft has already been published.

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What is a Trademark ?

A Trade Mark is a mark, adopted for distinguishing, in the course of trade, the goods or services of one person from those of others.

A trademark may be- –Word –Device/picture –Label –Logo –Name –Signature –Letters –Numerals –Shape of the Goods –Combination of Colours

Objects & functions of a Trademark

• To identify the goods/services.

• To distinguish the goods/services of the proprietor from those of others.

• To guarantees its unchanged quality, and

• To advertise the goods/services.

Benefits of Registration of a trademark

• Prima facie evidence of proprietorship of the trademark

• exclusive right to use the trademark

• May assign or license the trademark as any other property

• Enjoy the Goodwill

REQUIREMENTS TO REGISTER A TRADEMARKS

Graphical representation of Mark.

Capable of distinguishing the goods or services of one person from those of others.

It should be used or proposed to be used.

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Steps for registration of trademark in India

• Select a good trademark

• Apply for registration

• Classify your goods & services

• Appropriate office and

• Respond to office queries/notices

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Selecting a good Trademark

DO’S

Go for a trademark which is-

Easy to speak & spell (in case of word mark),

Appealing and easy to remember or recollect.

invented or coined word, unique monogram, logo or a geometrical device

Selecting a good Trademark

DON’TS

Don’t go for a trademark which consists of-

laudatory or descriptive matters (such as best, perfect, super etc

words or pictures of the product concerned)

geographical names. common surnames, names of a community or persons

a matter prohibited by law to be used as a trademark

a matter that is same/similar to an already existing trademark in the market.

Protecting the trademark in India

• Register TM with the Registrar of Trademarks in Indian Trade Marks Registry

• The Controller General of Patents, Designs and Trade Marks is the Registrar of trademarks

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Administrative set up

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GOVERNMENT OF INDIA

Department of Industrial Policy & Promotion, Ministry of Commerce & Industry

Controller General of Patents, Designs & Trademarks (CGPDTM)

Patents Designs Trademarks

Registry (TMR)

Geographical indications

NIIPM

Ahmedabad Delhi Mumbai

(Head office) Chennai Kolkata

COPYRIGHT

TERRITORIAL JURISDICTION OF TMR OFFICES

• MUMBAI: The State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa

• AHMEDABAD: The State of Gujarat, Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli.

• KOLKATA: The State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman and Nikobar Islands.

• New Delhi: The State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh.

• Chennai: The State of Andhra Pradesh, Telangana, Kerala, Tamilnadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Islands.

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Technical set up of the TMR

• web based Trade Marks System (TMS) – www.ipindia.nic.in

• Digitization

• All branches of the TMR are connected with the Central Server located at Delhi.

• All the actions done by the office staff through the TMS is recorded in the Central Server on real time basis.

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Technical set up, contd. • The Official Website of CGPDTM http://www.ipindia.nic.in

provides gateway for –

– online filing of trademark applications

– Actual status of a trademark application

– Public Search

– Classification of goods and services

– International non-proprietary names

– Trademark journals

– Annual reports, Public notices & other important information

– Dynamic trademark utilities

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Appropriate form and fee

At present there are many forms prescribed for

filing new applications depending on the nature of

application such as Form TM-1, TM-2, TM-51, TM-52

TM-3, TM-8 etc.

Fee ordinarily Rs.4000/-per class

Classification of goods and services

For the purpose of registration of trademarks, the Registrar classifies goods & services in accordance with international classification of goods and services

(NICE Classification)

[S. 7 (1) of the Trade Marks Act 1999 and Rule 22 of the Trade Marks Rules 2002]

Goods are classified in classes from 1 to 34, and services are classified in classes from 35 to 45

The classification of goods & services are published on the office website

Online filing of TM applications

• Class III Digital Signature

• (n)Code Solutions, TCS, Safe Scrypt & e- mudhra

• Fee through Net-banking in comprehensive e-filing services for

trademarks.

• online filing of TM forms and Reply to Examination report is

also available

TRADEMARK REGISTRATION

PROCEDURE

AND

PROCESS

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Steps involved in registration process

•

Receipt of applications, data entry & digitization [at Branch Offices]

Examination of applications, approval by Supervisors, release

of ERs [centrally at TMR Mumbai]

In case there are no objections/objections waived - Publication in the Trade Marks

Journal

In case of objections

Response by applicant-

Consideration of response

[at Branch Offices

Objections not waived after

Response- Show Cause

Hearing [at Branch

Offices]

No opposition/opposition decided in favor of the

applicant- Application proceeds to

registration

In case of opposition, opposition proceeding

[at Branch office]

Opposition allowed- application refused

Objections not waived-

Application refused

Appeal may be made before

IPAB,

RECEIPT & EDP SECTION

• Generating receipts to fee papers.

• Allotment of Application Number.

• Data Entry.

• Digitization of records (Fee/ Non-fee).

• Vienna Codification.

EXAMINATION

• After Data Entry/Digitization, forward the application to Examination.

• Accepted/objected.

• Dispatched Examination Report through module.

PRAS & PARM SECTIONS

• Pre-Registration Amendment Section

• Pending Application Record (Management) Module

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SHOW CAUSE HEARING

• Those Application which are set for hearing in the PARM Section will move

to Show Cause Hearing Section. If the Hearing Officer is satisfied with the

reply to examination report with supporting documents, he/she accepts

the application and advertises the application in the Trade Marks Journal

and if not satisfied he/she refuses the application.

JOURNAL PUBLICATION

• The Applications which are accepted by the Examiners/Hearing officers are

published in Trade Marks Journal.

OPPOSITION

• Once the application is advertised in Trade Marks Journal, it is open for public to

file opposition within four months from the date of advertisement of the

application in the Trade Marks Journal.

• Then the opposition proceedings will start. After completion of the opposition

proceedings the Registrar either accepts or refuses the application. If the Registrar

accepts the application the Opposition is dismissed. If the Registrar refuses the

application the Opposition is declared as abated.

REGISTRATION

• After the journal publication, if no opposition is filed within the prescribed period

then the Application will be move to registration section for issuing registration

certificate.

• In opposition matters too if the application is accepted for registration the

application is moved to registration section for issuing registration certificate.

Validity of Registration

Validity is for 10 years

Thereafter it can be renewed

Fee is Rs 5000/-

Thank you

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