Trademark - Meaning, Application, Procedure, Documents, Cancellation

Trademark is a brand or name associated with a service or product of an individual or company. It is a unique mark through which the consumers identify a product or service. It differentiates the product manufactured or service provided by an individual or an entity. 

In India, trademarks are regulated under the Trademarks Act, 1999 (‘Act’) and Trade Marks Rules, 2017 (‘Rules’). When a trademark is registered under the Act, it is protected from infringement which means that a third party cannot use the registered trademark for their products or services without authorised permission.

Meaning of Trademark

A trademark is defined under Section 2(m) of the Act as a mark that includes a brand, device, heading, ticket, label, name, word, signature, letter, the shape of goods, numeral, packaging or combination of colours or any such combination. 

Trademark is a visual symbol or logo used to indicate the source of the products or goods. The symbol or logo can be a word, signature, number, geometrical figure, monogram, a combination of words and numerical, a combination of colours with a logo, or it can even be a sound mark. 

Examples of a Registered Trademark

A few examples of registered trademarks are:

• Apple (Half eaten apple symbol with the leaf)
• Coca Cola (Coca-cola bottle symbol)
• Nestle (Nestle word written in red colour)
• Amazon (Amazon word in black colour with a yellow arrow below)
• McDonald’s (Yellow ‘M’ symbol)
• Nike (Swoosh symbol)
• Maggie (Maggie word written in yellow colour inside the red colour bubble)
• Adidas (Adidas word written with three parallel lines/stripes above the word)

Who Can Apply for Trademark Registration?

The owner (proprietor) of the trademark can apply for trademark registration in India. An individual is the owner of a trademark that he/she creates and uses for his/her services or products. A company or entity will be the owner of the trademark when the trademark is used to represent the goods or services of that company. Thus, an individual or a company can apply for trademark registration.

Procedure for Trademark Registration

The trademark registration involves the following procedure:

Trademark search

Before filing the trademark registration application with the Registrar of Trademarks (‘Registrar’), the owner (applicant) must first conduct a trademark search on the online website of the Controller General of Patents, Designs and Trademarks. The trademark search is an essential step before applying for registration as the Registrar will reject the application if the proposed trademark is similar or resembles another registered trademark. 

Thus, the applicant must first conduct a trademark search to find out if there are any similar or resembling trademarks. If there are no similar registered trademarks, the applicant can proceed to fill out the trademark registration application. If a similar registered trademark exists, the applicant must change his/her trademark and then apply for trademark registration.

Trademark application

The trademark registration application is Form TM-A. The applicant must fill out Form TM-A and submit it either online or offline. It can be filed online by signing up on the ipindia website. It can be filed offline by submitting the form to the Registrar Office of Trade Marks located in Delhi, Kolkata, Mumbai, Chennai and Ahmedabad.

Examination by the Registrar 

Once the Registrar receives the application, either online or office, he/she will examine the form to find out if the trademark abides by the terms and complies with the Act and Rules. When the Registrar finds any objection to the application, he/she will inform the applicant. The applicant needs to file the rectified or amended application with the Registrar. 

Publication of the Trademark

When the Registrar is satisfied that the application abides by the Trademark Act and Rules, he/she will publish the trademark in the trademarks journal. Any third party can oppose the trademark registration after it is published in the trademark journal by filing a statement of opposition with the Registrar. 

The Registrar will inform the applicant of the opposition, and the applicant needs to file the counter-statement to the opposition. The applicant and the opposing party should also file evidence supporting their case. The Registrar will hear both parties and pass an order of acceptance of registration or rejection of registration. 

Issuance of Trademark Registration

When the Registrar passes an order of acceptance of registration in case of any opposition proceedings, he/she will proceed and grant the trademark registration certificate. When there is no opposition to the trademark within three months of its publication in the trademarks journal, the Registrar will give the trademark registration certificate to the applicant. 

Documents Required for Trademark Registration

The following documents are required to be given along with the trademark registration application:

• Soft copy of the trademark
• Business registration proof (in case the applicant is a company or entity)
• Class III digital signature certificate (in case of online filing of trademark registration)
• Date of first use of the trademark in India (in case of any prior usage of trademark or prior use claim)
• Power of attorney signed by the applicant

Rectification of a Trademark

Rectification of trademark is the procedure to rectify or correct an error or defect of the trademark details entered in the Register of Trademarks (‘register’) after its registration. Any person aggrieved by the wrong entry of the trademark can apply for its rectification to the Registrar or the Appellate Board. 

Upon application for rectification of trademark by the person aggrieved, the Registrar or Appellate Board will make such an order for cancelling or varying the registration of a trademark. The grounds on which the rectification application can be made are as follows:

• Error in the name, contact details or address of the registered proprietor
• Error in the trademark details such as description, class and design
• Omission or absence of any entry in the register
• Change in details of the proprietor such as name, address and contact details
• Removal of the trademark that is not in use for five years
• Strikeout any goods, classes of services or goods in respect of which a trademark is registered
• Any other grounds accepted and prescribed by the Registrar

Cancellation of a Trademark

Cancellation of a trademark is taking it off or removing its entry from the register. Any person aggrieved by the trademark registration, a person interested in the trademark or the Registrar can apply for cancellation of a trademark. A registered proprietor of the trademark can also file for the cancellation of its entry from the register. 

The cancellation application is to be filed to the Registrar or the Appellate Board. After the application is filed, the Registrar or Appellate Board will hear the matter and pass an order. When the Registrar makes an order of cancellation, he/she will execute it by removing the trademark from the register. 

When the Appellate Board passes an order for cancellation, an intimation is sent to the Registrar to cancel the trademark from the register. The grounds on which a cancellation application can be filed are as follows:

• The trademark is registered without any genuine or bonafide intention to use it for the goods and services for which it is registered 
• The registered trademark was not in bonafide use for five years from its registration, and such five years have elapsed
• The registered trademark is used in a manner that causes confusion or deception to the public
• The trademark proprietor has misrepresented or has not disclosed any material fact regarding the trademark in its registration application, and such fact, if disclosed, would not justify such registration
• Any change in the circumstances after trademark registration such that its registration will be invalidated
• When a condition is mentioned in the register, and there is a failure or violation to observe such a condition.

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