The article aims to give the readers a simple, concise and practical explanation of section 18 of the Trade Marks Act, 1999. But before understanding section 18, one must know what is the meaning of Trademark. The term “Trademark” consists of two words namely : Trade and Mark. Here, TRADE refers to buying or selling of goods or services, while MARK denotes a symbol, word or other indicator that is used to represents the trade being conducted. Registration of a trademark protects its identity from being copied and distinguish it from competitors.
As per section 2(z)(b) of the Trade Mark 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 colours.
There are different types of Mark that can be registered in India are:
1) Product Mark: A product mark is specifically used for goods. It is usually used to identify the goods origin and distinguish it from its competitors.
Ex – Zara logo on its apparels.
2) Service Mark: A service mark is specifically used for services rendered. It helps service provider to distinguish among its competitors.
Ex – A postal agency logo.
3) Collective Mark: A collective mark is used by a group of people or association to indicate its membership and distinguish the goods or services provided by its members.
Ex- Mark used by Charted Accountants to signify membership in professional association.
4) Certificate Mark: A certification mark is used to certify that particular product/services qualify certain necessary requirement.
Ex – ISI mark on product is a certificate mark.
5) Shape Mark: A shape mark is used to protect the product’s uniqueness and make it distinctive so as to make it as a brand recognition. It helps the consumer to recognize the desired brand by just the shape of the brand.
Ex – The shape of a coca cola bottle.
6) Word Mark: It helps to protect a word or phrase used by the person.
Example – The wordmark of “GOOGLE”
7) Sound Mark: A sound mark is used to distinct sound used by a brand. If a brand is recognised by a particular sound than they can get the sound registered.
Ex – The shut down or restart sound of NOKIA keypad phone.
8) Symbol Mark: A symbol protect a logo or symbols that represent by a brand. It helps the business safeguarding their distinctive visual representation.
Section 18 of the Trade Mark Act,1999 states the process of application for the registration of trademark.
Section 18(1) says that
“Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark”.
Here any person includes:
- An Individual
- Joint Owners
- A Sole Proprietorship Firm
- A Partnership Firm
- A Limited Liability Partnership Firm
- An Indian or Foreign Company
- A Trust or Society
A person can file the application for trademark registration for the mark which the person has been using for a prolonged period i.e., person has used or has the desire of using it in future i.e., proposed to be used to the trademark registry via an online mode or offline
Section 18(2) says that
“A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services”
Earlier in The Trade and Merchandise Act,1958 for the registration of mark in more than one class a person has to file separate application for each mark which has been amended in Trade Mark Act,1999 where in a single application a person can file for more than one class of mark but has to pay separate fee for each desired class.
Fee payable for the application by Individual, MSMEs or startup is ₹ 4500 for E-filing and ₹ 9000 for Non-MSME.
Any business entity having an annual turnover of upto ₹ 250 crore would be considered as MSME provided that it has obtained UDYAM registration.
A business entity with an annual turnover not exceeding ₹ 100 crore will be considered as startup provided that it has obtain startup registration certificate.
For any other type of person i.e., international organization or business entity having the annual turnover exceeding ₹ 250 crore the fee for e-filing is ₹ 9000 and physical filing is ₹ 10,000.
There are 45 class of goods/services for the registration of trademark in which from class 01-34 different type of goods are included and from class 35-45 different types of services are included.
Section 18(3) says that
“Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate: Provided that where the applicant or any of the joint applicants 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”
The trademark application needed to be filed in the office of trade mark registry and there are 5 trademark registries in India among which the territory of India is divided:
- Trade Mark Registry, Ahmedabad which has jurisdiction over the State of Rajasthan and Gujarat and Union Territories of Daman and Diu, Dadar and Nagar Haveli.
- Trade Mark Registry, Mumbai has jurisdiction over the State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa.
- Trade Mark Registry, Kolkata which has jurisdiction over state of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman & Nicobar Islands.
- Trade Mark Registry, New Delhi which has jurisdiction over state of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh
- Trade Mark Registry, Chennai which has jurisdiction over state of Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Island
This section also specifies that an entity with various places of business, the trademark application must be filed in the territorial jurisdiction corresponding to the principal place of business (i.e., headquarters). For foreign companies who do not carry business in India, the trademark application must be filed in the area in India corresponding to the company’s service address.
Section 18(4) says that
“Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit”
The registrar can accept the application, reject it or ask for amendments in it as he deems fit.
He can refuse it if he thinks that the application is in void of Section 9 of the trademark act i.e., it lacks distinctiveness, it consists exclusively of mark or indicator that is common in trade or consist of exclusive mark or indicator that has become habitual in trade.
If can also ask for amendments, modification, conditions or limitations if he is of the opinion that it is better for the applicant mark to make it distinctive and eligible for registration.
Section 18(5) says that
“In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.”
This section clearly indicates that the registrar cannot make arbitrary decision. He needs to provide proper justification in respect to refusal of the trademark application or for the conditional acceptance of the trademark, allowing the applicant to take the necessary action if needed.
Process of registration of Trademark:
- Trademark Search
The applicant must conduct a public search accessible through the trademark registry to examine the database of existing trademarks. This is to determine whether a similar trademark already exists, assess the possibility of trademark registration, and avoid potential objections from the relevant authorities.
‘Public search’ can be performed via
(https://tmrsearch.ipindia.gov.in/tmrpublicsearch/frmmain.aspx)
- Filing of the Trademark Application
The applicant must file the trademark application with the respective trademark office that falls under their jurisdiction. The application can be filed online through the official website (https://ipindia.gov.in) or by submitting hard copies to the appropriate office. The applicant is required to submit the application along with the necessary documentation, providing complete details of the trademark for which registration is sought.
- Examination of Trademark
The examination report must be issued by the ministry regarding the proposed trademark after the application is filed and accepted, following the necessary scrutiny as prescribed by the applicable rules.
- Reply to examination report
If the ministry raises any objections, the applicant must respond to the objection within the time limit prescribed by the registrar.
- Post Examination
Once the examination process is completed and no objections are raised by the ministry against the proposed mark, the mark is published in the trademark journal. However, if the applicant’s response to the objection is seems unsatisfactory, a hearing will be scheduled. Following the hearing, the ministry may either publish the mark in the journal or refuse registration if the objection is upheld.
- Opposition to Registration
After the trademark is advertised and published in the Trademark Journal, any person who believes that the advertised mark infringes upon their own mark may file an opposition to the trademark within four months of its publication. The applicant must then submit a counterstatement in accordance with the procedure established by law, along with evidence to substantiate their claims.
- Registration of Trademark
If all objections and queries related to the mark are resolved, and no opposition is raised within four months of the mark’s publication in the journal, the trademark is issued to the applicant within one week after the expiration of the advertisement period. Upon registration, the trademark is valid for a period of 10 years and must be renewed thereafter to maintain its validity.
Author: Soumya Agrawal, law student at Institute Of Law, Nirma University
Wish to read similar articles? Click the link to read more: https://jpassociates.co.in/section-9-and-11-of-tm-act/
Link to section 18 of the Trade Marks Act, 1999: https://www.indiacode.nic.in/show-data?actid=AC_CEN_11_60_00004_199947_1517807323972§ionId=16803§ionno=18&orderno=18
