Registration of marks
Registration of trademarks can be undertaken by filing an application with the IPO. The fee for a physical filing is 10,000 rupees. For e-filing, the fee is reduced by 10 per cent. There is a new expedited process for registration for which an additional expedited processing fee of 40,000 rupees is payable. The fee for renewal of a registered trademark is identical to the filing fee (i.e., 10,000 rupees for a physical filing and 9,000 rupees for an e-filing).
Once an application is filed, it is given an exclusive number and a date. Based on the priority of filing it is taken in its turn and examined. The process of examination includes an assessment of inherent registrability and acquired distinctiveness and prior rights. If no objections are found, the trademark is published in the Trade Marks Journal to invite oppositions (see Section III.iii) from members of the public at large. If no objections are filed within four months of the publication, the registration certificate is issued. The registration dates back to the date of the application and is thereafter renewable every 10 years.
There is no requirement for the mark to have been used in India to make it eligible for registration in India. Trademarks can also be registered on a proposed user basis. If, however, use of the trademark is not commenced for a period of five years, it can be a ground for removal of the trademark from the Register of Trade Marks.i Inherent registrability
The following trademarks are not registrable in India on grounds of inherent registrability:
- those devoid of any distinctive character; that is to say, not capable of distinguishing the goods or services of one person from those of another person;
- those that consist exclusively of marks or indications that 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 service;
- those consisting exclusively of marks or indications that have become customary in the current language or in the bona fide and established practices of the trade,
- those of such nature as to deceive the public or cause confusion;
- those containing or comprising of any matter likely to hurt the religious susceptibilities of any class or section of citizens of India;
- those comprising of or containing scandalous or obscene matter;
- those whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950; or
- those consisting exclusively of a shape:
- of goods that results from the nature of the goods themselves;
- of goods that is necessary to obtain a technical result; or
- that gives substantial value to the goods.
In Bata India Ltd v. Chawla Boot House, the court held that while generic marks are least distinctive, descriptive marks require secondary meaning to be established before they can be registered. However, suggestive marks and arbitrary and invented marks are all inherently distinctive, not requiring any evidence of secondary meaning.
In the case of descriptive marks, registration can be obtained by producing evidence that, before the date of application for registration, the mark acquired a distinctive character as a result of the use made of it or it was a well-known trademark.
A trademark may be limited wholly or in part to any combination of colours. If a trademark is registered without limitation of colour, it is deemed to be registered for all colours.ii Prior rights
A trademark can be denied registration if there exists a likelihood of public confusion with an earlier trademark, which includes the likelihood of association with the earlier trademark, and if either of the following relative grounds (based on prior rights) applies:
- the mark is identical to an earlier trademark within a similar goods or services sector; or
- the mark is similar to an earlier trademark within an identical or similar goods or services sector.
A trademark may be denied registration even in a case where it is sought to be registered for goods or services that are not similar to those for which the earlier trademark is registered in the name of a different proprietor or if the earlier trademark is a well-known trademark in India, if the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark. An earlier trademark is one that is either registered or used prior to the later trademark.
Similarly, a trademark can be denied registration if its use in India is liable to be prevented by the laws of passing off or copyright.iii Inter partes proceedings
All trademark applications are published in the Trade Marks Journal to enable members of the public to oppose such registrations within a period of four months. It is also possible to initiate proceedings with the Registrar to initiate rectification or cancellation proceedings against granted registrations. These can also be initiated with the IPAB. While opposition proceedings can be initiated by any member of the public, rectification and cancellation proceedings can only be filed by an aggrieved person (i.e., a person who has some legitimate interest in having the registered mark rectified or removed).iv Appeals
Appeals against the orders of the Registrar can be filed with the IPAB. Orders of the IPAB can be challenged in the Supreme Court of India by way of a special leave petition. It may also be possible to challenge such orders of the IPAB by way or writ petition to a High Court.