There are five trade mark registration offices in India located in New Delhi, Chennai, Mumbai, Ahmedabad and Kolkata. The location of the applicant will decide on the office in which the application must be filed. For foreign applications, the application must be filed in the jurisdiction of the agent.
It is not compulsory to register a trade mark in India as rights can be acquired under common law through use of a mark. These rights can be defended through the tort of passing off.
However passing off requires a proprietor to prove goodwill, misrepresentation and damage, even then protection can be limited to a local area.
In India a registered trade mark has the protection of the Trade Marks Act 1999 which does not require a proprietor to prove goodwill, misrepresentation or damage (which can be very difficult and expensive to prove) when defending a mark against infringers.
The first step before filing a trade mark application in India is to conduct a trade mark search which will allow you to determine whether the proposed mark has already been taken. This initial search could save you losing your trade mark application fees.
In India, anyone can file an application for a trade mark once the correct fee is paid. The application is numbered as per seriatim and date. The registration number is comprised of the application filing date and the application number.
Objections to an application may be raised under section 9 or section 11 of the Trade Marks Acts 1999 if it;
- is not distinctive
- is descriptive
- has a direct reference to the character and quality of the goods.
- is a geographical term which in its ordinary significance has come to be known for a particular kind of quality of goods.
- is against public policy.
- conflicts with an earlier mark.
- is likely to cause confusion and / or deception and is liable to be prevented under the laws of passing off.
After the examination process the Registrar may accept the application and allow it to proceed to publication.
If there are earlier marks already registered which are identical or similar to the applicants mark the applicant can claim concurrent or parallel rights. These rights can be claimed on the grounds of honest and bona fide adoption in which case the Registrar may waive any objections and accept the application for registration regardless of the earlier identical or similar marks.
If the mark is accepted by the Registrar it will be published in the Trade Marks Journal for the general public to oppose for a period of 3 months.
Any application which is opposed will be decided by the Registrar in accordance with the provisions of the Act and any common law rights which a party may claim.
When the registration is granted it is valid for 10 years from the date of application after which it must be renewed.
If you have any more questions about trademark registration please see our FAQs or call us free on 0800 862 0370
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