1. What is a Trademark
Trademarks are marks that are used to identify goods or services to have been produced by a particular company or individual. They are distinctive like the three-striped pyramids of Adidas or the tick mark of Nike. These marks help the consumer to easily identify a product with the producer. To ensure that these marks are not used to misrepresent products or confuse consumers, they are protected by law. To get the protection of the law the trademark needs to be registered. Registration of the trademark will protect the mark from being used illegally and will give the owner of the mark all rights over the mark.
2. How to Register a Trademark
Trademark registration is a simple but time-consuming process. To register the trademark one needs to:
- Identify the class under which the trademark falls under
- Ensure there is no similar trademark
- Apply using the correct form depending on what type of trademark you require
- Submit the form and wait for the allotment number
- Wait for the confirmation of registration ( status can be checked online using the allotment number)
- Enjoy trademark protection for the period of ten years from the date of application.
- Although the process is straightforward it may take anywhere from 12-24 months.
- The real problem is if your trademark is rejected by the registry. The trademark when applied for registration it will be placed under scrutiny. If the officer feels it is in violation of any provisions under the Trademark Act, 1999 (hereinafter referred to as the ACT), he may reject the application.
3. Grounds for Rejection
A trademark application is scrutinised thoroughly by the officers of the registry if they find any infringements of any kind of the law or of other registered marks they may reject the registration application of the mark. At this point, the status of the application will show “Marker for Exam”.
The following are the grounds for rejection of the trademark registration application.
The first thing the examiner will look for is whether the application was filed according to the procedure and whether all the information has been presented as prescribed by the Act. If the examiner finds anything amiss with the process or the documents of the application then he will reject the application.
Similar to a registered trademark
When applying for a trademark, one must always check whether your mark is the same similar to an already existing trademark. You can do this by doing a public search on the website of the controller general of patents, designs and trademarks or just take legal services from a lawyer specialised in applying for trademarks. If it is found by the examiner that the mark being applied for is similar to an already registered trademark or a trademark currently is registration he can reject the application.
Descriptive words or design
If the mark contains any descriptive words or terms that are commonly used to identify a product. For example, if you try to trademark the word SWEET for marketing products like chocolate or candy it will be rejected as it will be unfair to other people.
General words or design
General words like PENS or PENCILS cannot be trademarked for selling pens or pencils as only one company cannot be given the term to use uniquely. Therefore such a mark may be rejected from registration by the examiner.
Offensive terms or design
A trademark cannot contain an offensive term or design, as such a mark will be against the public morality and public order. Therefore terms of designs that are offensive will usually be rejected by the examiner.
Confusing terms or design
A confusing mark or a deceptive mark may be any mark that can lead the consumer to believe falsely about the origin, producer, quality, material etc of the product. For example, if a mark is of a FISH but the product is only red meat the ark may be rejected on the grounds that it is misleading.
Official designs or words
If the mark contains any official words, terms, designs or pictures it will be rejected for registration by the examiner as it is against public welfare. It can falsely convince the consumer that it is condoned by an official body. For example, if the trademark is the flag of a nation it will be rejected on this ground.
Conditions and restrictions
If the examiner feels the ark is valid but needs some conditions or changes to its use of appearance he may reject the mark for registration as is.
After the examiner has scrutinised the mark up for registration he may object to its registration. In this case, the status of the application will show “Objected”.
At this point, the applicant has the chance to put forward his case to the examiner. Usually, the objection is either raised under Section 9 or 11 of the Act.
Objection under Section 9
Section 9 of the Act gives absolute grounds for refusal of registration. Section 9 rejects any mark that is:
- deceptive of origin of goods or services,
- deceptive about the nature of the goods or services,
- deceptive about the quality of the goods or services
Objection under section 11
Section 11 of the Act provides for relative grounds for refusal. If the examiner objects under this section it will be due to the mark having similarities with an already registered trademark. In this case, the examiner will attach the conflicting parts of the mark as well as the trademarks that it is conflicting with. At this point, the applicant has to overcome the objections placed by the examiner. This has to be done according to the section under which the objection has been raised.
Section 9 of the Act
To counter this objection the applicant has to prove that the mark of the applicant can be easily distinguished by the consumer pertaining to the goods or services provided. For example Apple the electronic company has the trademark of an apple and therefore can be deceptive on the product sold by the company. Even so, it can be proved that the mark has since acquired a distinctive meaning and is easily recognisable by consumers as to the products sold are electronics.
Section 11 of the Act
Here the applicant has two options:
- Contest that the mark is different from the conflicting mark. In this case, he must prove that his mark is distinctively different from the conflicting mark and can definitely by distinguished as two separate marks.
- Get a no objection affidavit from the owner of the conflicting registered mark.
Once the examiner has taken into consideration the applicants arguments against the objection of the registration of the mark he will finally decide whether to allow the mark to be registered.
Here he will either push the status of the application to Exam Report Issued which means it has been approved and will now be published in the official gazette, The Trademark Journal to open up the chance for the public or third parties to object. Or he will push the status to Refused in which case it means the application for registration has been rejected.
If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must e filed within three months of the date of issuance of the refusal order by the registrar. This time limit may be extended if the appellant can show reasonable cause as to why he could only approach the IPAB after the time limit.
Appeal to the IPAB has two different processes depending on the type of trademark registration that was sought after by the applicant/appellant. The appeal must be filed in the prescribed manner following the TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules.
Trademark for one class
If the appellant had applied for a trademark under one class using form TM-1 then he has to use Form 2 from the TradeMarks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules. The fee for this appeal is rupees 5,000.
Trademark for two or more classes
If the appellant had applied for a trademark in more than one class using form TM-A, then he needs to file the appeal using Form-3. The fee for the filing of this appeal is rupees 10,000.
All appeals need to be verified by the appellant. Once filed the appeal will be sent to the Deputy Registrar for scrutiny. If he finds anything defective then he will give time to the appellant to correct the defect and refile the appeal. If the appellant does not do so it will be deemed to be abandoned. If the Deputy Registrar does not find any defects then he will give it a serial number.
The case will be heard in the court that has the corresponding jurisdiction. If one of the parties fails to appear for the hearing on the date the case may be either considered on merit, decided ex parte or be dismissed at the discretion of the court.
If the case is decided ex parte or is dismissed the IPAB may set aside the decision if a petition is filed against the order within 30 days of the date of the order.