REGISTRATION AND
PROTECTION OF TRADEMARKS
IN INDIA
‘Trade Mark’ – Definition under the Trade Marks Act 1999
Trade mark means, a mark
capable of being represented graphically and
which is capable of distinguishing the goods or services of one person
from those of others and
may include shape of goods, their packaging and combination of
colures….
[S. 2 (1) (zb) Trade Marks Act 1999]
"mark" includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination
thereof;
[S. 2 (1) (m) Trade Marks Act 1999]
Purpose & functions of a Trademark
• To identify the origin of the product/service.
• To distinguish the product/service of the proprietor from those of others.
• To guarantee the quality of the product/service, and
• To advertise the product/service.
Benefits of Registration of a trademark
• Registration is prima facie evidence of proprietorship of the trademark
• It gives the exclusive right to use the trademark in respect of
goods/services; and to take legal action in case of infringement
• The registered proprietor may assign or license the trademark as any other
property
• The registered proprietor can enjoy the Goodwill associated with registered
trademark forever, if the mark is renewed from time to time
Registering the trademark in India
In case you want to register and protect your trademark within the territory of India,
you must register it with the Registrar of trademarks in Indian Trade Marks Registry
The Controller General of Patents, Designs and Trade Marks is the Registrar of
trademarks
The proprietorship over trademark can not be registered with Registrar of properties.
Technical set up of the TMR
All functions are performed through an web based
Trade Marks System (TMS)
The Central Server of TMR is at Intellectual Property Office (IPO) Building in Delhi and
back up server is at IPO, Mumbai.
All branches of the TMR are connected with the Central Server through the Virtual
Private Network (VPN).
All the actions done by the office staff through the TMS is recorded in the Central Server
on real time basis.
Administrative set up
GOVERNMENT OF INDIA
Department of Industrial Policy & Promotion,
Ministry of Commerce & Industry
Controller General of Patents, Designs &
Trademarks (CGPDTM)
Patents Designs Geographical indications Trademarks Registry (TMR)
Delhi Mumbai Chennai Kolkata Ahmedabad
Steps for registration of trademark in India
Select a good trademark
Apply for registration on appropriate form with appropriate fee
Classify your goods & services and specify them properly
Apply before appropriate office of the Trade Marks Registry; and
Respond to office queries/notices properly and on time
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
[In the proposed revised rules there will be only one form for
all types of applications for registration of trademarks.]
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
Appropriate office of the TMR
Every application for registration of trademark is filed in the office of the Trade
Marks Registry within whose territorial limits the principal place of business in India
of the applicant is situate:
Provided that where the applicant does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry within
whose territorial limits the place mentioned in the address for service in India as
disclosed in the application, is situate.
[Section 18(3) of the Trade Marks Act 1999]
The application can also be filed online but the appropriate office is still to be
selected
Online filing of TM applications
Any person having Class II & III Digital Signature from (n)Code
Solutions, TCS, Safe Scrypt & e- mudhra, may file TM applications and
pay the fee through comprehensive e-filing services for trademarks, a
gateway available on the office website.
Facility for online filing of more TM forms for online submission of
Reply to Examination report is also available
Steps involved in registration process
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