Blog Details

Author - Associate Aliza Abdin

What is a Trademark?

Trademark is a type of protection which can be availed after registration of a specific name, symbols, letters or words. It has to be used in relation with a business, a product, a service or a particular brand name. A trademark is important for the company so as to make the customers differentiate their sources and goods from others in the same industry.

A trademark makes sure that no other company or brand uses the same or a similar name or symbol that can be confusing to the general public. The right to a particular trademark lasts forever as long as the paperwork is done and a fee is paid regularly.

It is astounding how a trademark becomes a part of the product; a company no longer needs to tell the customers. It is accepted and known worldwide in a short period of time.

For example, the shape of the apple with a bite taken out that apple uses as its logo and the swoosh logo that Nike uses.

Trademark Registry of India

The trademarks registry of India was established in 1940 followed by the Trade Marks Act, 1999. The trade mark registry also directs the Trade Marks Act. It is a source of information about anything related to trade mark; it also acts as the implementer in matters relating to trademarks in India.

The trade mark registry and the Trade Marks Act, 1999 work hand in hand. First, the applied trademarks in India are registered under the Trademark Act, 1999 and then the registry of trademarks registers the trademarks if it fulfills all the requirements mentioned in the Trade Marks Act and Rules. The main objective is to protect the respective company and their trademarks from embezzlement or any kind of fraud.

The Trade Marks Registry has its head office in Mumbai with several branch offices at Ahmedabad, Chennai, Delhi and Kolkata.

Trademark Rejections and Appeals Procedure

There are three types of rejections of a trademark registering application .They are as follows:

1. Technical rejections: These rejections commonly involve minor mistakes, usually in the procedural matters which can be easily corrected.

2. Substantive rejections: These rejections are a bit complicated and involve problems regarding the confusion of a particular trademark with another. Solving these rejections is a little difficult and may need a trademark lawyer.

3. Final rejections: These are usually given when the person has failed to respond to a technical or substantive rejection. These are final in nature and cannot be solved.

Filing an Appeal against the Decision of the Registrar:

In case the application for registering the trademark is rejected then the person can appeal against the respective order or decision by the registrar; it may be filed before the Intellectual Property Appellate Board ('IPAB'). The procedure for the appeal can be found in the Intellectual Property Appellate Board (Procedure) Rules, 2012 (Drafted by the Department Of Industrial Policy and Promotion of the Ministry of Commerce and Industry)

A proper procedure has to be followed with proper rules and regulations. They are as follows:

• Time range: The respective appeal against the respective order of the registrar has to be filed within three months of receiving the rejection order of the registrar.

There are however certain exceptions; an appeal may be accepted if the reasons for the late appeal are justified and the appellate board is satisfied with it.

• The Prescribed Form: According to Section 91(3) of the Trade Marks Act, 1999:-

1. An appeal to the Board must be in the prescribed form.

2. It must be verified in the prescribed manner.

3. It shall be accompanied by a copy of the order appealed against and the requisite fees.

The different types of forms on the trade mark rules deals with different kind of appeals; such as the appeal of the rejection order of the registrar with respect to goods or services that fall in one class while others that fall in two or more classes.

The prescribed form requires certain important details; which are as follows:

1. The application should be a written one

2. The paper used should be a thick green or white one with both sides printed or typed.

3. There should be three sets in paper or book form

•  Evidence: It is mandatory for the applicant to submit documents on which he can rely on; an affidavit has to be presented to prove it. The documents to be submitted along with it are: the notice of opposition, the counter-statement and the evidence.

• Fees: The prescribed fee by the Trade Marks (Applications, Appeals and Fees to the Intellectual Property Appellate Board) Rules is to be paid according to the respective form no.

It is given below:

•  Authorization: If the parties are not representing themselves then the appeal must have a vakalath (only for lawyers) and a letter of authorization (for trademark agents).

•  Verification of the Appeal or Application: Each and every application must be verified by the parties or in case the party is absent then the representative of the party.
  
  

•  Presentation and Scrutiny: Every application must be sanctioned by the Deputy Registrar on the date of the presentation of application. If the application is correct and in order it will be provided with a serial number and will be registered accordingly. But in case the application is incorrect then it will be rejected and the applicant will be given proper time to correct it, if he fails to do so the application will be nullified.
  
  

• The Place of Hearing: A specified place having jurisdiction shall be given for the hearing under Rule 2(m). The place is usually chosen where the head office or branch of the Trade Mark Registry is located. (Chennai, Delhi, Mumbai, Kolkata or Ahmedabad)

• Day of the Hearing: The matter will be heard by the Appellate Board on the assigned day; in case a party doesn’t show up then the case can be decided by ex-parte or maybe dismissed depending on the board.