A draft of
Manual of Trade Marks
Practice & Procedure
Page | 2
Practice & Procedure
, ,,
Government of India
Ministry of Commerce &Industries
Office of Controller General Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan, S.M. Road, Antop Hill, Mumbai-400037
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Patents/Designs/Trademark
Geographical Indications
General Objective of the Trade Marks Manual
The draft Manual of Trade Marks Practice and Procedure is being published to bring uniformity
and consistency of practice with respect to the various procedures involved in the
administration of the Trade Marks Act and it is hoped that the manual will be useful for the
officers of the Trade Marks Registry and the users of the system. Indeed, section 98 of the
Trade Marks Act gives statutory recognition to “practice of the Trade Marks Registry” as an
important aspect in determination of legal proceedings on appeal before the Appellate Board.
For greater understanding and transparency, the manual attempts to explain the practice and
procedure of the Trade Marks Registry by categorizing the issues outlined in three parts:
underlying concepts, the requirements from the stakeholder and the office action involved as
per the provisions of Trade Marks, 1999 and rules made thereunder.
The manual is in the nature of a guide for the users and, if any of the statements in this
document are at variance or inconsistent with the provisions of the Act or the Rules, the latter
shall prevail. Wherever appropriate, reference to case laws representing decisions of Courts in
India have been made to facilitate better understanding of the law. The Manual will be finalised
after receipt of comments of the stakeholders on this draft and careful consideration of the
same. It is expected that the manual will be updated from time to time in the light of important
judgments and decisions of courts involving interpretation of the provisions of the Act and
Rules.
(Chaitanya Prasad)
Controller General of Patent Design & Trademarks
10
th
March 2015
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Index of Contents
Chapter I: Filing of a Documents in Trade Mark Registry
Section A: General Filing Requirement
1. How a document/s can be filed
2. Filing of documents -
2.1. Requirements as to form
2.2. Requirements as to content
3. When last Date of Filing is a Public Holiday
4. Documents must be signed and dated
4.1. Who can sign?
4.2. Applicant should supply an address for service
4.3. Fee
5. Non-compliance of filing requirements
6. Filing process
Section B: Filing of Trade Mark Application (Additional Requirements)
1. Filing of Trade Mark Application
1.1. Who can file a Trade Mark Application?
1.2. Meaning of “Registered proprietor”
1.3. Identification of Proprietor before applying for a trademarks
2. Details Required from the Applicant
2.1. In case of Individual
2.2. In case of Joint owners
2.3. In case of Partnership Firm
2.4. In case of Companies
2.5. In case of Companies Government Departments
2.6. In case of Companies Quasi-Governmental undertakings
2.7. If applied as Conventional application –
2.8. Statement of Use:
2.9. Clear Specification of goods / Servicers:
3. Form of the Application:
4. Information required in the Application Form
4.1. Basis Information
4.2. Representation of Trademarks
4.3. Requirement of graphical representation
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4.4. Size of The Trademarks
4.5. Specification of Representation
4.6. In case of series Trademarks:
4.7. In case of Shape trademarks
4.8. In case of trademarks: as Combination of Colours
5. A representation that includes words in a language other than English/Hindi and/or characters
other than Roman /Devnagari characters.
6. Specification of the goods and/or services for which registration is sought
6.1. Specification required as per Rule 103
6.2. Limitations on the specification.
6.3. Problems with a specification
7. Signature and Date
8. Fees:
9. Consequences of non-compliance of filing requirements
10. Data Entry
11. VIENNA Codification
Chapter II: Examination of Applications filed for Registration of Trademarks
Introduction and Scope
1. Identification of Nature of Application
2. Ensuring the appropriate name of the Applicant:
3. Ensuring the submission of the Power of Attorney
4. Ensuring about the applicant’s principal place of business
5. Ensuring transliteration and translation of trademark in non-English or non-Hindi characters.
6. Ensuring the consent of a person or his legal representative, if the trademark contains a name or
representation of that person
7. Ensuring submission of draft regulations in case of an application for registration of a collective
mark
8. Ensuring submission of draft regulations in case of an application for registration of a
certification mark
9. Ensuring submission of adequate priority documents, in case of applications with priority claims
10. Examination of application as to classification of goods and services
11. Examination of application as to relative grounds for refusal of registration
12. Examination of application as to absolute grounds for refusal of application for registration
13. Draft for communication of objections to acceptance of application for registration, which are
liable to be refused on absolute grounds
14. Examination of series marks
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15. Proposing appropriate condition of acceptance of the application or limitation of use of the
trademark
16. Communication of Examination report to the applicant
Chapter III: Post Examination Disposal of Applications Filed For Registration of
Trademarks
Introduction and Scope
1. Consideration of applicant’s reply to examination report
2. Treating the application as abandoned, if no reply to examination report is received
3. Show Cause Hearing
4. Publication of applications in the trademarks journal
5. Withdrawal of acceptance
6. Registration of trademarks
Chapter IV: Chapter IV Tribunal Section (Opposition & Rectification Proceedings)
Section A: Opposition
1. How a opposition proceeding can be started
2. Formality Requirements
3. Mode of Evidences
4. Fixation of Hearing after completion of Evidences by both the parties
Section B: Rectification
1. Who may apply for Rectification of a registered Trade Marks
Section C: Review of a Decision
1. Review of a decision
Chapter V: Pre-Registration Amendment
1. Correction of errors or amendment in an application
2. Division of Application
Chapter VI: Renewal, Assignment/Transmission, Registered User and Post
Registration Changes of Registered User
1. Renewal of Trademark(s):
2. Assignment & transmission of a registered trademarks
3. Registered users:
4. Post-registration amendments:
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Chapter I:
Filing of a Document in Trade Marks Registry
This chapter deals with filing of a document/new application in the Trade Mark Registry for
registration of a Trademark or in relation to an earlier application for registration of a
trademark.
This chapter is divided in to two parts i.e. Section A and Section B. Section A deals with
general filing requirements for any document in trademarks registry and Section B deals with
specific additional requirements related to trademark applications (TM 1, TM 2, TM 51, etc.).
Section A: General Filing Requirements
This section of the chapter covers the general requirements for filing any application, notice or
request under the Trade Marks Act 1999 (hereinafter referred to as “the Act”) or Trade Marks
Rules 2002 (hereinafter referred to as “the Rules”).
Sr.
No.
General Description
Relevant
provision of
the Act &
Rules
1
How a document/s can be filed
General
Requirement
A document can be filed by a person or his duly
authorized agent at the appropriate office of the
Trade Marks Registry as defined in Rule 4 of the
Trade Marks Rules 2002, which includes the Head
office (at Mumbai) or branch offices (at
Ahmedabad, Chennai, Delhi, Kolkata) of the
Registry. However, certain documents as specified
under Rule 8(2) may either be filed at the Head
office of the Trade Marks Registry or at the
appropriate office while some documents as
specified under Rule 8(2) (c) may only be filed at
the Head office of the Trade Marks Registry (unless
the Registrar directs otherwise).
Appropriate office of the Trade Marks Registry for
the purpose of filing a document is the office within
the territorial jurisdiction of which the principal
Section 18,
Rules 4, 8 &
15
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place of business of the applicant in India is
situated. Detailed provisions about the appropriate
office for various categories of applicants are
provided in Rule 4.
The document may be filed by delivery at the front
office personally or by sending by post, or
submitting electronically through the gateway
provided in the official website i.e. ipindia.nic.in.
All offices of the Trade Marks Registry are open
for receipt of fee bearing documents from 10 am to
3.30 pm, on all working days. Non fee bearing
documents can be filed at any time during office
working hours.
Electronic filing of documents can be done at all
hours (24x7).
2
Filing of documents -
2.1
Requirement
from the
applicant
Requirements as to form
The requirements in respect of documents as
specified in the Rules are set out below:
Documents must be in English or Hindi
Documents must be neatly handwritten or
typewritten or printed upon strong paper of
good quality and of size of approximately 33 cm
X 20 cm. and shall have on the left hand part
thereof a margin of not less than 4 cm.
Contents of the documents must be on one side
of the paper in a deep permanent ink.
The contents of the documents must be in large
and legible characters.
The signature of the persons signing a document
and the date of signature must be placed
immediately at the end of the document.
The name of the person signing a document
must be legibly written in English or Hindi in
capital letters beside the signature of that
person.
An alteration made in a document before it is
filed at the Trade Marks Registry should be
initialed in the margin by the person signing the
document.
Rules 8,
13,14 and 15
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2.2
Requirement
from the
applicant
Requirements as to content
Applications, notices and some requests filed at the
Trade Marks Registry are required to be in a
prescribed form.
The application, notice or request should generally
include the following details, depending upon the
nature of the document:
Trade mark number(s) in relation to which
certain action is to be taken;
Name and address for service of person(s)
making the application, notice or request (if the
application, notice or request is made by the
proprietor of the trade mark, the proprietor's
address is also generally required);
Name of the proprietor of the trade mark if the
proprietor is not the person making the
application, notice or request;
Details and grounds of the action that is to be
performed; and
Any other information or documentation that be
relevant to enable action to be taken;
The appropriate class or classes, in relation to
which the application is filed
Proprietor code or agent code if allotted,
Signature(s) of person(s) or on behalf of the
person(s) making application, notice or request
and the name of signatory.
Date and place of filing
Note:
In case of online filing of the document, digital
signature will be considered as signing of the
document. Details about e-filing are given at ---
3
Concept
When last date of filing is a public holiday
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If a document is due to be filed on a date that is a
weekend or a public holiday, the due date becomes
the next day on which the Registry is open except
when the document is filed online.
4
Documents must be signed and dated
4.1
Concept
Who can sign?
An application, notice or request must be signed by
or on behalf of the person making the application.
If the application, notice or request is made by more
than one person (as defined in section B of Chapter 1)
and it is not signed by an agent on behalf of all the
persons, the document must be signed by each person
in whose name the application, notice or request is
made.
A legal practitioner or a registered trade mark agent or
a person in the sole and regular employment of the
principal can sign on behalf of a person making an
application, notice or request.
A document on behalf of a partnership firm shall be
signed by at least one partner stating that he is
signing on behalf of the firm.
A document on behalf of a body corporate shall be
signed by a director or by the secretary or other
principal officer of the body corporate and the
capacity of the individual signing the document
shall be stated below his signature.
Section 145,
Rule 14
4.2
Applicant should supply an address for service
4.2.1
Requirement
from the
applicant
A person making an application, notice or request or
the proprietor of a trade mark, or a person whose
claim to an interest or right in a trade mark is
recorded in the Register and who has no principal
place of business in India, must supply an address
for service in India.
Indian applicants may also mention address for
service in India.
Note:
Section 143
Rules 18 and
19
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While filing a document, the applicant/agent should
provide email address for electronic communication
from the Registry.
4.2.2
Requirement
from the
applicant
An address for service to which documents from the
Trade Marks Registry (or other parties) are served
or given must be an address in India.
Section 18
(3)
4.2.3
Requirement
from the
applicant
An address for service of a person who has filed an
application, notice or request is the address for
service stated in the application, notice or request,
unless the person notifies the Registrar of another
address.
An address for service in India should be provided
by every applicant or by joint applicants or by the
proprietor of a trade mark, who has principal place of
business in India at the date of making the
application for registration but has subsequently
ceased to have such place.
Rule 18 & 19
4.2.4
Requirement
from the
applicant
A change in an address for service must be notified in
writing to the Registrar, by way of request on form
TM-16 or TM-50 along with prescribed fee.
Section 8(4),
22, 58, Rules
41, 91, 96, 97
4.2.5
Office
Action
Any document that must be served on, or given or
sent to a person by the Registry may be left at or sent
by post to the address for service of the person.
Where there are multiple applicants or multiple
persons making a single notice or request, and more
than one address for service is given, the
correspondence should only be sent to first
addressee.
Sec. 143
Rule 15
4.3
Fees
Requirement
from the
applicant
All applications, notices and requests should be
accompanied by the fees as prescribed in First
Schedule of the Trade Marks Rules 2002.
Fees can be paid in cash or by a bank draft or a
cheque drawn on a scheduled bank at the place
where the appropriate office of the Trade Marks
Registry is situated. Bank drafts and cheques should
be crossed.
Online payment may be made through payment
Rule 11(5) &
25(19)
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gateway provided in the official website i.e.
ipindia.nic.in.
5
Non-compliance of filing requirements
If a document received for filing at the Trade Marks
Registry fails to comply with the Act or the Rules
regarding the filing of documents:
In case of fee bearing documents wherein appropriate
fee has not been paid, the concerned document shall
be deemed not to have been filed. The document shall
be deemed to have been filed only when the
appropriate fee is received.
Dishonor and non realization of a cheque shall be
treated as appropriate fee not having been paid.
Non realization of Demand Draft for any technical
reasons shall also be treated as appropriate fee not
having been paid.
In case of non fee bearing documents, the
documents will not be accepted if it is unsigned or
does not contain the referred application /opposition
/ rectification / RU/CC number.
Section 150
Rule 11(2) &
11(5)
6
Filing process
6.1
Office
Action
Every document shall be received through the
FRONT OFFICE module of the Trade Marks System
(TMS).
6.2
Office
Action
All documents addressed to the Registrar of Trade
Marks shall be received by the office superintendent
or in his/her absence, by the Assistant/clerk of the
section.
6.3
Office
Action
The superintendent of the R&E section shall open the
document on receipt through post. Fee bearing
document shall be sent to cash counter and the same
will generate fee receipt through system.
Acknowledgment shall be generated in case of non
fee bearing documents.
6.4
The front office shall affix a stamp (with the signature
of the official concerned) on all the documents
received. The stamp should include the date on
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which the document is received, the amount of fee,
if any, and indication of the office of the Registry at
which the document is filed. The document so filed
shall be given system generated
receipts/acknowledgments which contains, as
applicable, the name of the office, the receipt
number, date and time, details of the person filing
the document, TM forms filed, reference number,
the person on whose behalf the document is filed,
amount of fees paid and the mode of payment.
6.5
Office
Action
The data entry shall be made in the EDP module. The
device marks shall be separately scanned in original
colours and shall be uploaded in the system.
6.6
Office
Action
R&E section shall digitalize all incoming
papers/documents and upload the same in the system
through the appropriate module viz. Application,
Opposition, Post Registration, RU, and Copyrights.
Correspondence shall be transferred to the
appropriate section.
6.7
Office
Action
In Post Registration requests where multiple marks
are involved in a single request, scanned copies of
documents shall be uploaded against every registered
trademarks covered in the request.
Section B: Filing of Trade Mark Application
This section deals with the provisions for filing of a trade mark application which are
supplemental or additional to the general filing requirements as given in section A of Chapter I.
An applicant making an application for registration of a trademark shall, in any case, have to
comply with the general filing requirements.
In Addition to the above it also gives glimpse of formality requirement in relation to the
acceptability of a trademark application to move towards examination.
As part of the examination of an application for registration of a trademark u/s 18 (4) and 18
(5), the Registrar must determine as to whether the application has been made in accordance
with the Trade Mark Act 1999 (here in after the Act) and / or Trade Marks Rules 2002 (here in
after the Rules) or not.
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Sr.
No.
General Description
Relevant
provision of the
Act & Rules
1
Filing of Trade Mark Application
1.1
Concept
Who can file a Trade Mark Application
A person who claims to be the proprietor of the trade
mark in relation to goods and /or services may apply
for the registration of a Trade Mark.
For the purpose of making an application of
Trademarks, "Person" includes:
A Natural Person,
A Body Incorporate,
A Partnership Firm,
HUF, Association of Persons (in case of collective
Trademarks), Joint Proprietor
A Trust,
A Society, or
A Government Authority/Undertaking
Sec. 18 (1)
1.2
Concept
Jointly owned trademark:
When two or more persons who use a trademark
independently or propose so to use it, as joint
proprietors, they may apply for registration of a
trade mark as joint proprietors.
The circumstances under which two or more persons
may apply for registration of a trade mark are set out
in Section 24 (2) of the Act.
Section 24
1.3
Concept
The Trade Mark being applied for registration may
be:
already in use or
proposed to be used or intended to be used
or
intended to be assigned to a company that is
about to be formed and registered under
Companies Act 1956 with a view to use
thereof in relation to those goods and services
by the company.
Section 18(1)
1.4
Concept
Identification of proprietor before applying for a
trademarks:
The person applying for registration of a trademark
must be clearly identified as the proprietor.
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2
Details Required from the Applicant
2.1
Requirement
from
Applicant
In case of Individual
The full name of the applicant is required. A
business name or trading style is not acceptable as
the name of an individual. This is because a business
name or trading style does not denote the nature of
applicant (legal entity) - it is more in the nature of an
alias for the purposes of a trade mark application: If
a trading style or business, name is included on the
Application in addition to the name of an individual
applicant, those details will be captured separately.
2.2
Requirement
from
Applicant
In case of Joint owners
In case of joint owners, the full name of each of the
joint owners, whether individuals or companies, is
essentially required. A trading style or business name
is not acceptable as the name of the joint owners and,
if given in addition to the joint owners, such names
will be recorded separately.
2.3
Requirement
from
Applicant
In case of Partnership Firm
The names of all the partners are essentially required
to be mentioned in an application filed by a
partnership firm.
2.4
Requirement
from
Applicant
In case of Companies
The name under which a company is incorporated is
required. A trading style or business name, if given,
will be recorded separately.
Abbreviations of the type of company are
acceptable. Annex Al at the end of this Part contains
a list of abbreviations of types of companies which
are recognized as bodies corporate.
2.5
Requirement
from
Applicant
In case of Government Departments
Where the applicant is a government department, the
traditional form of the name of the applicant is “the
Government of India /State of ________ (followed
by the name of the department) represented
by____________(name of the authorized person
followed by the name of department)”.
2.6
Requirement
from
Applicant
In case of statutory organizations/public sector
undertakings:
Reference should be made to the statute under which
such organization/undertaking is discharging its
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functions. The application can be made in the name
of the organization/undertaking as “Life Insurance
Corporation of India (established under the …….
Act) through its authorised signatory and executed in
the manner prescribed by the rules regulating it.
2.7
Requirement
from
Applicant
If applied as Conventional application –
The address of the applicant’s home country in
addition to his address for service in India is to be
provided.
2.8
Requirement
from
Applicant
Statement of Use:
A statement of user showing the date since when the
mark is used by the applicant or by his predecessor
in title has to be mentioned in the application, unless
the trade mark is proposed to be used, which is to be
mentioned specifically. The statement of user will
not be allowed to be changed subsequently.
Rule 27
2.9
Requirement
from
Applicant
Clear Specification of goods / Servicers:
The specification of goods and/or services should
not be unrealistically broad otherwise it will impinge
on the scope of use or intended use by others. In such
cases, the Registrar may require a declaration to
confirm the intended use of the trade mark.
[Rule 25(15)]
3
Form of the Application:
3.1
Requirement
from
applicant
Applicants should submit their applications in the
relevant prescribed forms given in Schedule II of the
Trade Marks Rules 2002.
Specific directions given in some prescribed forms
with regard to filling up the form must be complied
with.
Section 18,
Rule 12(1)
Rule 13(1),
Rule 14(2)
4
Information required in the Application Form
4.1
Requirement
from
applicant
Application must contain the following information:
Name of the proprietor(s)
Valid email id
Principle place of business
Address for service
Type of Mark, i.e. Word, Label, Device etc,
In case of Convention Applications, only single
priority date should be claimed; separate
applications should be filed if different priority
dates are claimed for different goods and/or
services.
Sec 143,
Rule 16, 18, 19
Rules and 19
Page | 17
Two additional representation of the mark,
Description of the trade mark including whether it
is a shape or colour trade mark
(When a proprietor of a trade mark applies to
register the trade mark, he or she is seeking
statutory protection for the trade mark. The
proprietor must define sufficiently in the
application what is to be protected so that
protection can be afforded).
Class numbers under which description belongs (as
per classification determined and published by the
Registrar at official web site),
Specification of goods and services (as per list of
items published in the classification)
If applied mark contains words in a language
other than English/Hindi and/or characters other
than Roman/Devnagari: translation and
transliteration of the applied mark,
Signature and full name of signatory
Designation of signatory and the capacity under
which the application is signed.
Note: all the above mentioned information should be
legible and clear
4.2
Requirement
from
applicant
Representation of the Trade Mark
The representation of the trade mark must clearly
identify the trade mark and should be in the
prescribed manner as provided in the application
form. It should show clearly all the features of the
trade mark. Additionally, in the case of a trade mark
that consists of a 3 dimensional mark or colour
combination it is necessary to make a statement to
that effect in the application. The representations
must be durable and satisfactory.
Rule 15, 28, 30
(1),
4.3
Requirement
from
applicant
Requirement of graphical representation
As a trade mark must be able to be represented
graphically for registration. The Registrar will, as a
matter of practice, require that the representation of
the trade mark that is included in the application
must be a graphical representation. Each trade mark
consisting of or containing colours, shape or
packaging must also be accompanied by a concise
Section 2(zb)
Page | 18
and accurate description of the trade mark. Such
descriptions will be entered as an endorsement and,
taken together with the graphical representation, will
help to define the scope of the registration. The onus
remains with the applicant to provide a suitable
representation of the trade mark.
4.4
Requirement
from
applicant
Size of The Trademarks
The size of the representation of the trade mark
should, where practicable, be no larger than 8cm x
8cm.Where a series of trademarks is applied for and
the representations of the trade mark are together
and more than 8cm x 8cm then, the representation of
each trade mark in the series should, where
practicable, be no larger than 8cm x 8cm and must
be attached to the application.
Rule 28 Section
15(3)
Rule 25(10)
4.5
Requirement
from
applicant
The representation must
show all the features of the trade mark clearly,
be of a quality that ensures all the features of the
trade mark will be preserved over time, and
be suitable for reproduction.
4.6
Requirement
from
applicant
In case of series Trademarks:
Where a series is claimed and one trade mark is in
black and white and the others in colour or where the
series is for a number of trade marks in different
colours, an endorsement in the application required –
Where the first representation is in black and white
and subsequent ones coloured:
The second trade mark in the series of trademarks is
depicted in the colour, and as shown in the
representation attached to application form.
(This would be repeated for subsequent trade marks
in the series.)
Where there are two trade marks in the series:
The coloured trade mark in the series of trademarks
is depicted in the colours and as shown in the
representation attached to the application form.
Where all the trade marks in the series are coloured:
The first trade mark in the series of trademarks is
depicted in the colours and as shown in the
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representation attached to the application.
(This would be repeated for subsequent trade marks
in the series.)
4.7
In case of Shape trademarks
4.7.1
Requirement
from
applicant
The applicant must state on the application form that
the application is for a shape trade mark. If this is not
stated but it is fairly clear, because the trade mark has
been depicted in a three-dimensional (3-D) drawing,
then the examiner should query whether or not the
trade mark is in fact a shape trade mark.
Rule 29(4)
4.7.2
Requirement
from
applicant
The representation of a shape trade mark or a trade
mark containing a shape should, where practicable,
be in the form of a perspective drawing that shows
clearly all the features of the trademark. The parts of
the configuration claimed to constitute the
representation must be accompanied by a concise
and accurate description of the trade mark. This
description will be entered as an endorsement of the
registration and will thereby serve to help define the
scope of the registration. There should be no
discrepancy between the representation and the
description and generally the description should
refer to the representation to make clear what the
relationship between them is.
Rule 29(4)
4.7.3
Requirement
from
applicant
Where more than one view of the trade mark is filed,
representation of the each view of trade mark should
(where practicable, in the size of not larger than 8cm
x 8cm) be attached to the application or uploaded
along with application if filed online.
4.7.4
Requirement
from
applicant
If the representation of the trade mark provided by
the applicant does not show clearly all the features
of the trade mark, the Registrar may require up to 5
further views of the trade mark.
4.7.5
Requirement
from
applicant
If the description or representation of the trade mark
is not satisfactory as it does not demonstrate the
nature of the trade mark sufficiently or able show
each feature of the trade mark sufficiently, the
applicant may be asked to provide a description or
further description of the trade mark and a specimen
of the trade mark within one month from the date of
issuance of the letter. If the applicant fails to comply
Rule 36
Page | 20
the requirement, the application may be treated as
abandoned.
4.7.6
Requirement
from
applicant
Black and white or colour photographs of shape
trademarks which have been mounted on good
quality paper will be acceptable as representations of
the trade mark. They must, however, be able to be
reproduced for the purposes of advertisement. If
there are doubts as to how the photograph/s would
reproduce, a black and white photocopy should be
taken. If the photocopy is clear then the photographs
are acceptable - if not then the applicant should be
requested to furnish clear photographs. A maximum
of two copies of each photograph may be required.
In case of online filing the photographs should be
scanned uploaded along with application.
Photographs should be clear originals as the office
will not accept photocopies of photographs. Nor will
"instant" type photographs be accepted as these fade
over time.
4.8
In case of trademarks: as Combination of Colours
4.8.1
Requirement
from
applicant
If the applicant is claiming a combination of colours,
as applied to the goods or their packaging or as used
in relation to their services, as a trade mark, they
should claim this by identifying the trade mark as a
colour trade mark on the application form. The exact
description of the colour combination as per
International Classification System of Colours (to be
verified) As well as supplying a graphical
representation of the trade mark, the applicant must
also provide a concise and accurate description of the
trade mark on the application. The description, which
should state precisely what the mark consists of and
how the description relates to the representation, will
be entered as an endorsement of the registration and
will thereby help define the scope of the registration.
An example of a suitable form of description for a
trade mark which consists of a combination of
colours applied to a pharmaceutical capsule would
be:
The trade mark consists of a maroon colour applied to
one half of a capsule at one end, and a gold colour
applied to the other half, as illustrated in the
representation on the application.
Rule 29
Page | 21
4.8.2
Requirement
from
applicant
Application for the registration of the trade mark shall
be submitted in triplicate with five copies of
additional representation.
Representations of the trademark in additional
representation / application shall correspond exactly
with one another.
Additional representation shall consists specification
and classes of goods / services for which the
registration is sought, name and address of the
applicant, name and address of the agent, if any, the
period of use, if any, and such other particulars
required by registrar from time to time.
If an applied trademark is claimed as combination of
colour, it is required to submit one reproduction of
mark in black & white and rest four in colours.
The reproduction furnished shall consist of three
different views,
If registrar considers that the reproduction is not able
to show all features of three dimensional mark he
may call upon to furnish within two months up to five
further different views and a description by words of
the marks,
If registrar considers the furnished different views is
not sufficiently show the particulars of the trade
marks, he may call up the specimen of the trade
marks.
If the applied trade mark consists of shape of the
goods of its packaging, the reproduction furnished by
the applicant shall consist of the five different views
and a description by words of the marks.
If registrar considers the furnished different views is
not sufficiently show the particulars of the trade
marks, he may call up the specimen of the goods or
packaging as the case may be.
4.8.3
Requirement
from
applicant
If a trade mark is always used in particular colours, a
different form of endorsement would be required.
This situation is most likely to occur when a trade
mark which is lacking in Capability to distinguish is
shown through evidence of use to be capable of
distinguishing when used in particular colours.
Acceptance for registration may be allowed on the
basis of a limitation to colour.
endorsement will be as follows:
Page | 22
Registration of this trade mark consists of colours …
Note:
If an applicant chooses to limit to some colours, the
same form of endorsement would be the appropriate
one.
5
A representation that includes words in a language
other than English/Hindi and/or characters other than
Roman /Devnagari characters.
5.1
Requirement
from
applicant
Where a trade mark includes words in a language other
than English/Hindi and/or characters other than
Roman/Devnagari characters, the applicant must file
an English/Hindi translation and/or transliteration in
support of the trade mark application.
Rule 33
5.2
Officer
Action
An endorsement must be entered on the Register for
all trademarks containing words in a language other
than English/Hindi and/or characters other than
Roman/Devnagari characters.
5.3
Office
Action
Where an applicant has provided the translation /
transliteration, an endorsement will be entered on the
system.
5.4
Office
Action
Where no translation / transliteration have been
provided, the examiner should request one and enter
the appropriate endorsement on the system when the
information has been received through TM-16.
In absence of the compliance of such request,
Application shall be deemed to have been
abandoned for non-compliance.
5.4
Office
Action
In the case of the trade mark containing words not in
English / Hindi, the form the endorsement should
take is as follows: The applicant has provided
that the translation of the
(NATIONALITY / LANGUAGE) words
appearing in the trademark is…
Where the trade mark contains words in characters
that are not Roman/Devnagari characters, the form of
endorsement should be as follows:
The applicant has provided that the (NATIONALITY /
LANGUAGE) characters
appearing in the trade mark may be transliterated as
… which may be translated into English as…
5.5
Concept
The information provided by applicants in formality
Page | 23
related matters should be accepted as correct unless
otherwise found during the examination.
6
Specification of the goods and/or services for which
registration is sought
Concept
An application for registration of a single trade mark
may be made in respect of goods and/or services in
one or more classes.
Note:
The applicant should specify the goods and/or
services in relation to which the application is made.
A specification that claims registration for all goods,
products or services etc. in a particular class would be
regarded as too wide.
Section 18(2)
6.1
Requirement
from
applicant
The applicant must specify, in the manner set out in
the Rule 103, the goods and/or services in respect of
which the registration is sought.
Rule 103
6.1.1
Requirement
from
applicant
Where the application is in respect of more than one
class the goods and/or services it must be grouped
together according to class number.
6.1.2
Requirement
from
applicant
A class number must be selected for each group of
goods and/or services. Where the application is in
respect of more than one class the goods and/or
services must be grouped together according to class
number and the groups of goods and/or services
must be presented in ascending numerical order of the
class number.
6.1.3
Requirement
from
applicant
As far as practicable, the applicant should specify the
goods and/or services for which registration is sought
in terms appearing in the Classification as published
by the Registrar This listings are available through
Trade Marks Registry or on website
www.ipindia.nic.in
Section 7
6.1.4
Adequate information regarding the goods and/or
services should accompany any specification where
the goods and/or services cannot be described using
the terms preferred at 6.1.3 above.
6.2
Limitations on the specification.
Concept
Limitations exist as to the scope of the goods and/or
services that may be claimed in a specification.
Section 29(2)
Page | 24
These limitations have been included in the
legislation in light of the fact that infringement action
under the provisions of the Trade Marks Act 1999
may be taken in respect of unauthorized use of a trade
mark on:
goods of the same description as that of goods
(registered goods) in respect of which the trade mark
is registered; or
services that are closely related to registered goods;
or
services' of the same description as that of services
(registered services) in respect of which the trade
mark is registered; or
goods that are closely related to registered services
present Act (TM Act 1999) has a much broader
provision than that which exists under the Trade &
Merchandise Marks Act 1958 as in the latter
infringement actions was limited to cases where the
goods in relation to which the unauthorized use
occurred were exactly the same as the goods for
which registration was granted, it is therefore
anticipated that applicants will now limit their
specifications to goods and/or services that reflect
their current and/or intended future trading
activities. To do otherwise would be to their own
detriment in that they would leave their registrations
open to non-use actions, in which the onus now lies
on the registered owner to show that they have used
or there is an intention, in good faith, to use the trade
mark on all the goods and/or services specified.
6.2.1
Concept
Use of the expressions, "all goods", "all services",
"all other goods" and "all other services" in a
specification of goods and/or services in respect of
which registration is sought is prohibited. Use of
these expressions or equivalent expressions such as
"all items" or "all products" will not be accepted as
the whole or part of a specification. Where an
application is made in respect of specific goods
and/or services but also includes one of the above
non-specific expressions in the specification, that
application will be taken as filed but the applicant
will be requested, as soon as practicable after filing,
to delete the prohibited expression. If, at the time of
examination the expression has not been deleted, the
Rule 25(15)
Page | 25
examiner will again require the expression to be
deleted. Additional items will not be able to be
entered in its place.
6.2.2
Concept
An application may not claim as part of the
specification of goods and/or services a range of
goods or services in a particular class which, in the
Registrar's opinion, is unrealistically broad in that in
commercial terms it is highly unlikely that the
applicant would deal in or provide that range of
goods or services. In such instances the applicant
may not able to demonstrate that the trade mark is
used or intended to be used on all the goods and/or
services specified.
For example if the applicant specified the class
heading of class 9 the Examiner may consider the
specification unrealistically broad and advise the
applicant accordingly. To overcome the problem, the
applicant would need to confirm his or her intention
to use on all the goods or services specified in that
broad specification by making a declaration to the
Registrar in the form of an Affidavit. This Affidavit
is required to satisfy the Registrar that the
application meets the requirements of Rule 25(15) of
the Act in respect of all the items specified for the
class or classes in question. Alternatively, the applicant
may wish to amend the specification in a manner that
limits the scope of the application to a more
commercially realistic range of items. It should be
noted that the provisions of Rule 25(15) will usually
be invoked only in relation to a wide range of goods
or services within a class, rather than a wide range of
items across classes
Rule 25(15)
6.3
Problems with a specification
6.3.1
Office
Action
While a preliminary check of classification is made as
part of the check for compliance with minimum
filing requirements, it is the examiner's responsibility
to ensure that the goods and/or Services have been
properly specified and classified. For a single class
application, this includes checking that the goods or
the services are in the class that has been selected for
the application. For a multi-class application the
examiner must check that the goods or the services
Page | 26
grouped within each of the designated classes are
properly classified. The following problem may
arise.
6.3.2
Office
Action
If single application is filed for goods or services
falling in more than one class but some of the goods
and/or services specified fall not in that class but in
other classes, the applicant has the option of either
deleting the goods and/or services which do not fall in
the nominated class, or of classes to cover those
items. Additional fees will be required to add
additional classes providing divisional fee and class
fee paid.
The examiner should advise the applicant of these
options. If the applicant chooses to add class, the
examiner should advise what additional fees are
required and also advise that examination of the
applied Trademark related to ability of registration
will not proceed until the fees are paid.
Note Where an item of goods or a service is properly
classified in the class nominated but could also fall
into classes not nominated, it will be taken that the
applicant only wished to specify the good or service
in the class nominated. No further enquiry will be
made and no additional classes will be added.
Rule 25(19)
6.3.3
Office
Action
Where only one class has been nominated but goods
and/or services in more than one class have been
specified and the applicant has paid the fees for the
extra classes, the examination will continue and the
applicant will be required to consent to the insertion of
the appropriate class numbers.
7
Signature and Date
Requirement
from the
Applicant
The application form must be signed and dated.
Rule 25(1)
Requirement
from the
Applicant
The application must be signed by the applicants or a
person authorized to sign the application on their
behalf. Persons who may sign on behalf of the
applicant are defined to section 145 who is (a) legal
practitioner (b) Trade Marks Agent (c) a person in the
sole and regular employment of the principal.
Section 145
Requirement
If the application was signed on behalf of the
Page | 27
from the
Applicant
applicant/s, the name and designation of the person
who signed the application must be given so that it can
be determined if the person who signed the application
had authority to do so.
Requirement
from the
Applicant
Where an application for registration of a trade mark
is in the name of a trustee or trustees it should be
signed by the managing trustee or trustees or a person
who is empowered to sign on behalf of the trustee or
trustees.
Requirement
from the
Applicant
If persons who are not authorized to sign have done
so, such as an accountant who is not in the sole
employment of the applicant, then the applicant
should be requested to have an authorized person
sign the application form.
Requirement
from the
Applicant
If the application is in the name of more than one
person and the individuals themselves signed the
application, rather than someone on
their behalf, each
individual must sign the application form.
Requirement
from the
Applicant
The name of each signatory must be written legibly
(preferably in block capitals) under or beside the signature.
This is so that the person who signed the application can
be identified.
Requirement
from the
Applicant
Where the application form has not been dated, no request
should be made for the applicant to provide this
information. The date on which the application was signed
is not vital information as the filing date is the date of
receipt in the Office which is based on the "fee stamp
date".
8
Fees:
Requirement
from
applicant
The application should be submitted along with the
appropriate fee as per Schedule I.
Where the specification exceeds 500 characters, excess
character fee is payable in form TM-61.
Rule 11(3) &
(4)
Rule 25 (16)
9
Consequences of non-compliance of filing requirements
Office Action
The Registrar will notify the applicant of deficiencies
in the application with respect to the filing
requirements and allow the applicant one month time
to rectify the same. If the deficiencies are not rectified
in the time allowed, the application may be treated as
Rule 36
Page | 28
abandoned.
10
Data Entry
Office Action
The data entry shall be made in the EDP module. The
device marks shall be separately scanned in original
colours and shall be uploaded in the system.
Data entries shall be verified by officer in-charge of
Receipt and EDP Section.
After verification the application moves through the
TMS system for examination except where the
application contains a device mark. In such a case, the
application moves for Vienna codification.
11
VIENNA Codification
Office Action
In the VIENNA CODIFICATION SECTION
(VCS), the authorized officials shall codify the
figurative elements of the trade marks appearing in
the application for registration. The officials of the
VCS shall enter codes as per the “International
Classification of the Figurative Elements of Marks
under the Vienna Agreement” and enter the
application codes in the specified module of the
TMS system.
Thereafter the application moves through the TMS
system for examination.
Page | 29
Chapter II
Examination of Applications filed for Registration of Trademarks
Introduction and Scope
Once the data entry of an application for registration of a trademark is made and digitization of
the trademark application & other connected documents, if any, is complete, the application is
allotted to an examiner for examination of application under the provisions of the Trademarks
Act & Rules.
The word 'Examiner' hereinafter includes any officer assigned the duty of examination of
applications.
The allotment of applications to existing examiners for the purpose of examination is done
automatically through the Trade Marks System and strictly in order of the date and time of
submission of applications.
However the applications in which request for expedited examination is made on form TM-63
and the same is approved by the officer in charge of the Receipt & EDP Section of the
respective branch of the TMR, these applications shall be allotted for examination on priority
basis.
The Examiner ordinarily gets a lot of 20 applications in his account. The Examiner looks at the
application detail and the original application (viz TM-1, TM-51, etc.) and scrutinizes the
application as to-
a. whether the application has been filed in the manner as prescribed in the Trademarks
Rules 2002
b. whether the trademark applied for registration can be refused registration(- on relative
grounds and/or absolute grounds) under the Trademarks Act 1999, if yes, the reasons;
and
c. whether any restriction, condition or limitation is required to be imposed, in case the
application is accepted for registration
The Examiner shall thoroughly examine the application as above and make a search of earlier
trademarks which are identical with or similar to the mark being examined and shall prepare his
consolidated examination report through the system containing therein, as for as applicable,-
i. all the objections relating to formality requirements as to filing of application,
ii. objections to acceptance of the application for registration of the trademark under
Section 9, 11 and other Sections of the Trademarks Act 1999, and
Page | 30
iii. proposals for conditions of acceptance or limitation to use of the mark, in case the
application is accepted for registration.
In case the Examiner is unable to examine the application thoroughly because of any formality
requirement, for example, the trademark is in a language other than English or Hindi, he may
ask the applicant to comply the requirements and he may defer the examination, till the
requirements are complied with.
In this document any reference to ‘the applicant’ in connection with communication of any
document to him or compliance of any requirement or reply by him shall hereinafter include
reference to the authorised agent of the applicant, unless otherwise appears from the context.
This chapter deals with practice and procedures involved in examination of trademark
applications.
Sr.
No.
General Description
Relevant
provision of the
Act & Rules
1.
Identification of Nature of Application
1.1
Office
Action
The examiner shall identify the nature of the
application for registration, on the basis of the form
submitted.
The prescribed forms for various types of
applications are as follows-
Type of application
Form
Application for registration of
trademark for goods or services
included in any one class
TM-1
Application for registration of
trademark for goods or services
included in any one class and with
priority claim under Section 154
TM-2
A single application for registration of
trademark for different classes of
goods or services
TM-51
A single application for registration of
trademark for different classes of
goods or services and with priority
claim under Section 154
TM-52
Application for registration of
Collective mark for goods or services
included in any one class
TM-3
Application for registration of
TM-64
Schedule I to
the Trademarks
Rules 2002
Page | 31
Collective mark for goods or services
included in any one class with priority
claim under Section 154
A single application for registration of
Collective mark for different classes
of goods or services
TM-66
A single application for registration of
Collective mark for different classes
of goods or services with priority
claim under Section 154
TM-67
Application for registration of
Certification mark for goods or
services included in any one class
TM-4
Application for registration of
Certification mark for goods or
services included in any one class
with priority claim under Section 154
TM-65
A single application for registration of
Certification mark for different classes
of goods or services
TM-68
A single application for registration of
Certification mark for different
classes of goods or services with
priority claim under Section 154
TM-69
An application to register a series
trademarks under for a specification of
goods or services included in a class
or classes
TM-8
An application to register a series
trademarks for a specification of
goods or services included in a class
or classes, with priority claim under
Section 154
TM-37
1.2
Office
Action
In case the application is not on proper form, the
examiner shall examine the application as per the
nature of the application submitted irrespective of
the form number mentioned and require the
applicant to correct form of the application by filing
a request on form TM-16.
The objection, for example, should be raised as
follows-
The application is made on form TM-1, for
certification mark in respect of goods or services
falling in a class, the form of the application should
be corrected as TM-4 by filing a request on form
TM-16.
2
Ensuring the appropriate name of the Applicant:
2.1
Office
action
The examiner shall ensure that the name of the
applicant claiming to be proprietor of the trademark
is properly mentioned in the application.
Page | 32
2.2
Concept
Section 18 of the Trade Marks Act states 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…’
An application for registration of a trademark may
be made by/on behalf of an Individual, a Company,
Society, Trust, Government body or a Public Sector
Undertaking, a Partnership firm or two or more
individuals in business together who jointly own a
trademark. The circumstances under which two or
more persons may apply for registration of a
trademark are set out in section 24 of the Act.
If the applicant is Individual-
The full name of the individual is required. A
business name or trading style is additional
information which shall be provided along with the
name of the individual.
The applicant name, in such case, should be like
“Ram Kumar Verma, an Indian National trading as
Verma Trading Company”
If the applicant is Company
A company may make an application for
registration of a trademark in its own corporate
name. The nature of registration, country of
incorporation and the law under which the company
is registered, are to be mentioned.
The applicant name, in such case, should be like
M/s Singh Industries Limited, a company registered
in India under Indian Companies Act 1956
A company being an incorporated body has its own
identity other than its directors, therefore a director
of the company cannot be the applicant, although
the application can be signed and submitted by him,
if he is so authorised.
If the applicant is Firm
A partnership firm may make the application, in
such case, the names of all partners shall be
mentioned, like A, B, C, & D trading as M/s XYZ,
an Indian Partnership Firm registered under Indian
Partnership Act 1932.
When partnership includes a minor in the
partnership, the name of guardian representing the
minor shall also be mentioned.
Section 18
Page | 33
If the applicant is Trust
Application may be made on behalf of a trust. In
such case, the name of its managing
trustee/chairman representing the trust should also
be mentioned.
The applicant name, in such case, should be like
M/s XYZ, a trust registered in India under Indian
Trust Act 1882, and represented by Mr X, its
Managing Trustee.
If the applicant is a Society
Application may be made on behalf of a society.
The applicant name, in such case, should be like
M/s XYZ, a society registered in India under
Maharashtra Co-operative Societies Act through its
secretary Mr. A.
If the applicant is Government
The Central or State Government or any
undertaking/company owned or controlled by such
Government may also make application for
registration of trademark like any other person.
Where the applicant is a government department.
The applicant name, in such case, should be like
“The Government of India/ Government of
_(state)___Represented by_ (name of the
Department)___through its Secretary Mr. xxx
If the applicant is Governmental undertaking-
The application can be made in the name of the
undertaking and executed in the manner prescribed
by the rules regulating the body. When the applicant
is any government undertaking, a reference shall
also be made to the Authority (usually legislative)
under which the undertaking functions, along with
the name of the undertaking.
The applicant name, in such case, should be like
M/s Life Insurance Corporation, a Public Sector
undertaking established under the Life Insurance of
India Act 1956
If there are Joint Applicants
Section 24 enables registration of two or more
persons to be registered as joint proprietors of the
trademark, where the mark is used or proposed to
Page | 34
be used in relation to goods or services connected
with the joint applicants.
The applicants’ name, in such case, should be like
M/s XXXX a company registered in India under
Indian Companies Act 1956 and M/s YYYY a
company registered in India under Indian
Companies Act 1956........claiming to be joint
proprietors of the trademark.
2.3
Office
action
In case the name of the applicant is not
appropriately mentioned, the Examiner should raise
objection as follows-
The application appears to have been filed in the
name of a partnership firm, names of all Partners
of the firm should be brought on record by filing a
request form TM-16
3
Ensuring the submission of the TM-48 / Power of
Attorney
3.1
Office
action
The examiner shall ensure that duly stamped TM-
48/Power of Attorney is filed, in case the
application has been submitted by a person other
than the applicant
3.2
Concept
In case the application has been not been filed &
signed by the applicant but by any other person
claiming to be the agent of the applicant, a power of
attorney duly executed by the applicant in favour of
that person on form TM-48, is required to be filed.
The agent can be a legal practitioner (Advocate), a
registered trademark agent or a constituted attorney
(a person under sole and regular employment) of
the applicant.
A Power of Attorney in favour of a firm without the
name of any individual agent or attorney should not
be accepted.
Section 145
Rule 21
3.3
Office
action
In case no proper Power of Attorney is submitted
and the application has been submitted by a person
other than the applicant, the Examiner should
communicate objection as
The application has been submitted by a person
other than the applicant, a duly stamped Power of
Attorney in favour of a particular agent should be
filed.
4
Ensuring about the applicant’s principal place of
business
Page | 35
4.1
Office
action
The examiner shall ensure that the applicant’s
principal place of business and the address for
service of the applicant is properly mentioned in the
application.
4.2
Concept
Every application for registration of trademark is
required to have the principal place of business of
the applicant.
In case the applicant has no principal place of
business in India, the applicant’s address for service
in India should be mentioned in the application.
The applicant who has a principal place of business
in India may also mention another address for
service in India which may be the address of the
applicant’s authorised agent.
Section 18(3),
143
Rules 17 &18
4.3
Office
action
If the Principal Place of business of the applicant is
not mentioned, or if the applicant has no Principal
Place of business in India and the applicant’s
address for service in India is not mentioned, the
Examiner shall communicate objection as follows-
The Principal Place of business of the applicant
should be brought on record by filing a request on
form TM-16, or
The applicant’s address for service in India should
be brought on record by filing a request on form
TM-16, since the applicant has no principal place
of business in India.
5
Ensuring transliteration and translation of
trademark in non-English or non-Hindi characters.
5.1
Office
Action
If the trademark applied for registration is in a
language other than English or Hindi, the examiner
shall ensure that a transliteration is properly
mentioned in the application.
5.2
Concept
Where a trade mark contains a word or words in
scripts other than Hindi or English, a sufficient
transliteration into roman script and its translation
of each such word in English shall be endorsed on
the application form and the additional
representations thereof, and every such
endorsement shall state the language to which the
word belongs and shall be signed by the applicant
or his agent.
Rule 33
5.3
Office
action
If the trademark applied for registration is in a
language other than English or Hindi, the Examiner
shall defer the examination; and communicate it as
deficiency to the applicant concerned and require
the applicant to provide a sufficient transliteration
into roman script and its translation in English by
Page | 36
filing a request on form TM-16.
The objection, for example, should be raised as
follows-
The trademark applied for registration is in a
language other than English or Hindi; you should
provide the transliteration of the mark into roman
script and its translation in English by filing a
request on form TM-16.
Only after compliance of this the application shall
be further examined.
6
Ensuring the consent of a person or his legal
representative, if the trademark contains a name or
representation of that person
6.1
Office
action
If the trademark applied for registration contains a
name or representation of a person, the Examiner
shall ensure that the consent of that person or his
legal representative is submitted with the
application
6.2
Concept
Where the name or representation of any person
appears on a trade mark the applicant shall furnish
the consent in writing of such person in case he is
living or, in case his death took place within twenty
years prior to the date of the application for
registration of the trade mark, the consent of his
legal representative, as the case may be, to the use
of the name or representation.
Section 14 and
Rule 34
6.3
Office
action
If the trademark applied for registration contains a
name or representation of a person in it, and no
consent of that person or consent of his legal
representative ( if that person is dead) is submitted,
the Examiner shall communicate objection as
follows-
The identity of the person, whose portrait appears
on the trademark, should be disclosed and the
consent of that person or, the consent of his legal
representative, if he is expired, should be furnished
in writing.
7
Ensuring submission of draft regulations in case of
an application for registration of a collective mark
7.1
Office
action
If the application is made for collective mark on
form TM-3, TM-64, TM-66 or TM-67, the
Examiner shall ensure that a draft regulation on
form TM-49 regarding association of persons
authorised to use the mark is submitted along with
Page | 37
the application.
7.2
Concept
The collective mark is owned by an association of
persons not being a partnership. It belongs to a
group and its use therefore is reserved for members
of the group. The primary function of a collective
mark is to indicate a trade connection with the
association or organization who is the proprietor of
the mark.
In case of application for registration as collective
mark a draft regulation under Section 63 of the
Trade Marks Act 1999, governing the use of the
collective mark is required to be submitted in
triplicate, with the application on form TM-49.
which shall include –
a) the name of the association of persons and their
respective office addresses;
b) the object of the association
c) the details of members
d) the conditions for membership and relation of
each member with the group;
e) the persons authorised to use the mark and the
nature of control the applicant exercise over the
use of the collective mark
f) the conditions governing use of the collective
mark, including sanctions
g) the procedure for dealing with appeals against
the use of the collective mark
such other relevant particulars as may be called
for by the Registrar
Section 63
Rule 128
7.3
Office
action
If the application is made for registration of a
collective mark on and no proper draft regulation
on form TM-49 is submitted with the application,
the Examiner shall defer the examination; and
communicate it as deficiency to the applicant
concerned and require the applicant to furnish
proper draft regulation on form TM-49 by filing a
request on form TM-16.
The objection, for example, should be raised as
follows-
A proper draft regulation on form TM-49 as per
Rule 128 of the Trade Marks Rules 2002 should be
submitted with the application by filing a request on
form TM-16.
Only after compliance of this the application shall
be further examined.
Page | 38
8
Ensuring submission of draft regulations in case of
an application for registration of a certification mark
8.1
Office
action
If the application is made for Certification mark on
form TM-4 or TM-65, TM-68 or TM-69, the
Examiner shall ensure that a draft regulation on
form TM-49 regarding competence of the
proprietor for certification of relevant goods or
services, is submitted along with the application.
8.2
Concept
The purpose of a certification trade mark is to show
that the goods or services in respect of which the
mark is used have been certified by some
competent person in respect of certain
characteristics such as Origin, mode of
manufacture, quality etc.
Application for registration should be made on
form TM-4 or TM-65, TM-68 or TM-69 as the case
may be, accompanied by prescribed fee. A draft
regulation under Section 74 of the Trade Marks Act
1999 in triplicate should also be deposited on form
TM-49 , which shall include
a) a description of the applicant;
b) the nature of the applicant's business;
c) the particulars of infrastructure like R&D,
technical manpower support;
d) the applicants competence to administer the
certification scheme;
e) the applicants financial arrangement;
f) an undertaking from the applicant that there will
be no discrimination of any party if they meet
the requirements set down in the regulations;
g) the characteristic the mark will indicate in the
certified goods or in relation to the rendering of
certified services;
h) the manner of monitoring the use of the mark in
India; and
i) such other relevant particulars as may be called
for by the Registrar.
Section 74
Rule 135
8.3
Office
action
If the application is made for registration of a
Certification mark on and no proper draft regulation
on form TM-49 is submitted with the application,
the Examiner shall defer the examination; and
communicate it as deficiency to the applicant
concerned and require the applicant to furnish
proper draft regulation on form TM-49 by filing a
request on form TM-16.
The objection, for example, should be raised as
follows-
Page | 39
A proper draft regulation on form TM-49 as per
Rule 135 of the Trade Marks Rules 2002 should be
submitted with the application by filing a request on
form TM-16.
Only after compliance of this the application shall
be further examined.
9
Ensuring submission of adequate priority
documents, in case of applications with priority
claims
9.1
Office
action
If the application is made on form TM-2, TM-37,
TM-52, TM-64, TM-65, TM-67 or TM-69, with
priority claim by virtue of similar application made
in any conventional country, the Examiner shall
ensure that documents in support of priority claim
are submitted along with the application.
9.2
Concept
Section 154 (1) of the Trademarks Act, 1999
empowers the Central Government to declare any
country or a group of countries or any inter-
governmental organization, as a convention
country, which affords to Indian citizens same
privilege as granted to its own citizens.
India has ratified the Paris Convention for
Protection of Industrial Property through a gazette
notification No S. O. 1041(E) dated 3
rd
September
1998, which came into effect from 7
th
December
1998. As on the date of India’s ratification, there
were 150 countries as members of the convention.
India declared all the 150 countries as convention
countries.
According to Section 154 (2) of the Trademarks
Act, 1999 where a person, who has made an
application for the registration of the trade mark in
the convention country, makes an application for
registration of the trade mark in India within six
months after the date on which the application was
made in the convention country, the trade mark
shall, if registered, under the Trade Marks Act,
1999 be registered as of the date on which the
application was made in the convention country.
Where a right to priority is claimed by reason of an
application for protection of a trade mark duly filed
in a convention country under section 154 a
certificate by the Registry or competent authority
of that Trade Marks Office is required to be
included in an application for registration, and it
should include the particulars of the mark, the
country or countries and the date or dates of filing
Section 154
Rule 26
Page | 40
of application.
The application should also include a statement
indicating the date of filing of the convention
application, the name of the convention country
where it was filed, the serial number, if any, and a
statement indicating that priority is claimed
9.3
Office
action
If the application is made on form TM-2, TM-37,
TM-52, TM-64, TM-65, TM-67 or TM-69, with
priority claim by virtue of similar application made
in any conventional country, and no document in
support of priority claim is submitted, the
Examiner shall communicate the objection as
follows-
Authentic documents in support of priority claim
should be filed
10
Examination of application as to classification of
goods and services
10.1
Office
action
The examiner shall ensure that the application for
registration of a trademark has been filed with
proper specification of goods and/or services and
with proper classification of such goods and/or
services.
10.2
Concept
An application for registration of trademark is filed
only in respect of specific goods or services;
therefore the application is required to have an
exact specification of goods or services in respect
of which the registration of the trademark is sought.
For the purpose of registration of trademark the
goods or services are classified, as for as may be, in
accordance with current edition of International
Classification of Goods and Services (NICE
Classification) published by the WIPO.
Section 8 of the Trademarks Act, 1999 authorises
and Rule 22(2) of the Trade Marks Rules 2002
requires that the Classification of Goods and
Services for the purpose of registration of
trademark, be published by the registrar of
trademarks. Accordingly the Classification of
Goods and Services for the purpose of registration
of trademark have been published and put up on the
office website.
An application is filed for registration of trademark
in respect of goods or services falling in a
particular class of the International Classification
of Goods and Services, as published by the
Registrar of trademarks. Under Section 18 (2) of
Section 7
Rule 22
Section 18(2)
Page | 41
the Trademarks Act, 1999, a single application can
however be filed for registration of trademark in
respect of goods and/or services falling in more
than one of such classes.
10.3
Office
action
In case the class of goods or services mentioned in
the application is other than the relevant class of the
International Classification of Goods and Services,
as published by the Registrar of trademarks, and no
aspect of such goods or services falls in the class
mentioned in the application, the Examiner shall
suggest the appropriate class for those goods or
services and require the applicant to correct the
class through a request on form TM-16.
For example, if an application for registration of
trademark in respect of ‘cosmetics’ is filed in class
34, the Examiner shall require the applicant to
correct the class as ‘3’ by a request on form TM-
16.
If some of the items of goods or services mentioned
in the application is other than the relevant class of
the International Classification of Goods and
Services, as published by the Registrar of
trademarks, but some items fall in the appropriate
class, or some category of such goods or services
fall in that class, the Examiner shall require the
applicant to delete items not falling in the class
applied and confine the goods or services which fall
in that class through a request on form TM-16.
For example, if an application for registration of
trademark in respect of ‘cosmetics’, ‘medicines’
and ‘readymade garments’ is filed in class 3, the
Examiner shall require the applicant to delete items
‘medicines’ and ‘readymade garments’ from the
specification of goods by a request on form TM-16.
However, if the application is made for registration
of trademark in respect of goods or services falling
in more than one class, and some items mentioned
in the specification of one particular class don’t fall
in that class but fall in some other class, the
applicant may amend the application to add
additional class or classes on payment of the
appropriate class fee and the divisional fee.
10.4
Office
action
In case the specification of goods or services
mention in the application is too wide or vague, the
Examiner shall raise objection to this effect.
Page | 42
10.5
Concept
The application for registration of trademark in
respect of all goods or services or large variety of
goods and services in a class, may be refused
registration unless the Registrar of trademark is
satisfied that the specification is justified by the use
of the mark or the applicant intends to make in
respect of all such goods/services. Accordingly
goods or services, in respect of which application of
registration of trademark is made, should be
specific and should not be wide or vague.
Some examples of wide and vague specification are
as follows-
In Class 7, claims to ‘machines’ without further
qualification should be objected to. The following
gives examples of descriptions which are
acceptable, since in each case the end use of the
machine has been identified:
Machines for agricultural purposes;
Machines for use in manufacturing processes;
Machines for the 42woolen industry
Or other specific machines, e.g. washing machines.
Applications filed in Class 9, which continue to
make vague and generalized reference to ‘electric,
electrical and/or electronic apparatus, devices,
equipment and instruments’ should be objected to
whether listed separately or in combination.
The Class 42, 43 and 44 headings are acceptable,
but applications which include claims such as
‘services that cannot be classified in other classes’
or ‘miscellaneous services’ will face an objection
under Rule 25(15).
The class heading to Class 45 is:
“Personal and social services rendered by others
to meet the needs of individuals; security services
for the protection of property and individuals”.
The first part of the heading, ‘Personal and social
services rendered by others to meet the needs of
individuals’ is considered too vague and
consequently a Rule 25 (15) objection should be
raised against applications containing this
description. Objections will also be taken against
applications where specifications contain either
‘personal services’ or ‘social services’ as
individual elements, e.g., ‘personal services
Rule 25(15)
Page | 43
rendered by others to meet the needs of
individuals’ or the like descriptions. The second
part of the heading, ‘security services for the
protection of property and individuals’ is
sufficiently precise and will not attract an
objection.
The objection to this effect should be raised as
follows-
The specification of goods/services mentioned in
respect of class xx, is very vague and wide. You
should provide exact items in respect of which the
trademark is sought to be registered, by filing a
request on form TM-16.
11
Examination of application as to relative grounds for
refusal of registration
11.1
Office
action
The Examiner shall make a search of same or
similar earlier trademarks in respect of same or
similar description of goods or services, and in case
such earlier trademarks are found in the name of
persons other than the applicant, he shall raise
objection to acceptance of the application for
registration on relative grounds.
The search of same/similar trademarks is performed
through the Trade Marks System.
The system enables examiner to make search with
three modes-word mark search, phonetic search
and device mark search. The system automatically
selects the class(es) for search of earlier marks as
per the application filed. The Examiner may also
add more class(es) for search
In the word mark mode the examiner can make
search of earlier marks on the basis of selected
characters as prefix or suffix.
In the phonetic search the Examiner may specify
one or two phonetic variant of the trademark, and
system will fetch all earlier trademarks having
phonetic similarity with the trademark applied.
In device mark search, the system enables examiner
to find out earlier trademarks having same/similar
features.
All trademarks consisting of any figurative
elements, are codified as per International
Classification of the Figurative Elements of Marks
(commonly referred to as ‘Vienna Codification’).
The examiner in this mode has to put correct
Vienna code(s), and the system will fetch all
Page | 44
trademarks bearing that Vienna code(s).
The examiner selects same/similar earlier marks
from the list of trademarks provided by the system.
The details of the selected marks can be seen by the
Examiner and he then finally selects conflicting
marks, if the earlier marks belong to persons other
than the applicant. In case same/similar earlier
marks belong to the applicant the examiner shall
select such marks as associated trademarks.
11.2
Concept
According to Section 11(1) of the Trade Marks Act
1999 - a trade mark shall not be registered if,
because of its identity or similarity with earlier
trade mark(s) and because of identity or similarity
of goods or services covered by such trademarks,
there exists a likelihood of confusion on the part
of the public, which includes the likelihood of
association with the earlier trade mark.
Explanation in Section 11 (4) of the Trade Marks
Act 1999, defines earlier trade mark. Under this
provision,
“a registered trade mark or an application under
section 18 bearing an earlier date of filing or an
international registration referred to in section 36E
or convention application referred to in section 154
which has a date of application earlier than that of
the trade mark in question, taking account, where
appropriate, of the priorities claimed in respect of
the trademarks;”.
Thus earlier trademark will include an earlier
registered mark and a prior pending application
Identical trademark
A mark is identical with the trade mark where it
reproduces without any modification or additions,
all elements constituting the trade mark or where,
viewed as a whole it contains differences so
insignificant that they may go unnoticed by an
average consumer
Similarity of marks
The terms similarity of trademarks is to be
construed as “deceptively similar” which
expression has been defined “as so nearly
resembling that other mark as to be likely to
deceive or cause confusion”.
Likelihood of confusion
Section 11(1)
Explanation in
Section 11 (4)
Section 2(1)(h)
of the Trade
Marks Act 1999
Page | 45
For likelihood of confusion to exist it must be
probable; it is not necessary that actual confusion
has arisen or should arise in the mind of public i.e.
the average consumer.
The three most relevant factors in examination of
trade mark applications by the Office will usually
be
i. the similarities and differences between the
respective trademarks,
ii. how distinctive the earlier mark is, and
iii. the degree of similarity between the respective
goods or services.
Rules of comparison as developed over the years
and as laid down Parker J. in Pianotist case should
continue to be followed- (1906) 23 RPC 774 page
777.
“You must take the two words, you must judge
them by the look and by the sound, you must
consider the goods to which they are to be applied,
the nature and kind of customer who would be
likely to buy the goods. Consider all the
surrounding circumstances, as to what is likely to
happen if each of those trademarks is used in the
normal way as a trade mark for the goods, the
respective owners of the mark. If there is likely to
be confusion, the application must be refused.”
General rules for comparison of marks
The general well settled principles for comparison
of trademarks are:-
The trademark must be considered as a whole.
It is not right to take a part of the trademark and
compare it with part of the other trademark
No meticulous or letter by letter comparison is
required. side by side comparison is not the
correct test
Comparison should be made from the point of
view of a person of average intelligence and of
imperfect recollection
The overall structural, visual & phonetic
similarity and similarity of the idea in the two
marks and the fact as to whether it is reasonable
likelihood to cause confusion should be taken
into account.
Additional precautions required where the goods
are medicinal preparations
“Exacting judicial scrutiny is required if there is a
Cadila
Healthcare
Limited vs.
Cadila
Pharmaceutical
Limited(AIR
2001) SC
1952,
Page | 46
possibility of confusion over marks on medicinal
products because the potential harm may be far
more dire than that in a confusion over ordinary
consumer products”
Where composite trade mark comprises
different distinctive element
In the case of composite marks comprised of two or
more distinctive elements, it will often be difficult
to determine that any one of those elements is
dominant. For example in ‘Alexander Morgan’,
where both elements contribute roughly equally to
the origin identification message sent by the
composite sign, which therefore depends upon the
presence of both elements. Accordingly, the view is
that the all the marks consisting of ‘Alexander’ or
‘Morgan’ will not be conflicting with the mark
comprised of the full name, even if the respective
goods are the same. The same principle is
recognized in Section 17(1) of the Act which enacts
that the mark must be considered as a whole.
However if prominent and distinctive portion of a
two trademarks are identical, earlier mark may be
regarded as conflicting with later mark. For
example CROCIN PLUS may be conflicting with
CROCIN FORTE for medicines.
It is possible for a word to be subsumed within a
multiple slogan mark even though the words do not
combine to form a totality with an obvious
meaning. For example, it would be difficult to say
that the word ‘targets’ has an independent and
distinctive role in the composite mark ‘Fashion
Week Targets Friday’ (for clothing). Consequently,
it is not likely that it would be held to be in conflict
with the mark ‘Targets’ (again assuming same
goods) because it is not the dominant element of
that mark, and neither is it an independent and
distinctive element of the composite mark.
Accordingly the trademark ‘targets’ should not be
cited as conflicting with the trademark ‘Fashion
Week Targets Friday’ (for clothing).
In a different case e.g. the mark CAREAID is
included in a two word composite mark such as
SPINESPAN CAREAID (for medical services)
where the two elements would appear to the
consumer to be a) normally distinctive, and b)
entirely independent of each other. If the respective
goods/services are also identical, it is quite likely
that the relevant consumer will assume that the
Page | 47
inclusion of the CAREAID mark as an element in
the composite mark SPINESPAN CAREAID is
indicative of an economic connection between the
undertakings using the marks. A section 11(1)
objection would therefore be justified if the marks
are in different ownership.
11.3
Office
action
In case, same or similar earlier trademarks of
different persons are found on records in respect of
same or similar description of goods or services,
the Examiner should raise objection as follows-
The trademark applied for registration is not
registrable under Section 11(1) of the Trade Marks
Act 1999 since identical or similar marks in respect
of identical or similar description of goods or
services are there on records and because of such
identity or similarity of marks and goods or
services there exists a likelihood of confusion on
the part of the public.
12
Examination of application as to absolute grounds
for refusal of application for registration
12.1
Office
action
The examiner shall examine the application to see
as to whether the trademark applied for registration
is capable of distinguishing goods or services of
one person from those of other and its registration
is liable to be refused registration under Section 9
of the Trade Marks Act 1999
12.2.1
Concept
Section 9(1) of the Act sets down the following
absolute grounds for refusal of registration,
according to it,
a) trademarks which are 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;
b) trademarks which consist exclusively of marks
or indications which may serve in trade, to
designate the kind, quality, quantity, intended
purpose, value, geographical origin ,or the time
of production of goods or of rendering of
services, or other characteristics of goods or
service,
c) trademarks which consist exclusively of marks
or indications which have become customary in
the current language or in the bona fide and
established practices of the trade:
Devoid of distinctive character
“The expression ‘distinctive’ in relation to goods in
Page | 48
respect of which a trademark is proposed to be
registered means adopted to distinguish goods, with
which the proprietor of trademark is or may be
connected in the course of trade, from goods in case
of which no connection subsists.”
“Distinctiveness has been understood to mean some
quality in the trademark which earmarks the goods
so marked as distinct from those of others”
In the 1999 Act ‘distinctive’ & ‘capable of
distinguishing’ have been made synonymous. It
means a trademark which is inherently distinctive
or which has become capable of distinguishing
goods/service of applicants from those of others,
can be considered for registration.
A mark which has a direct reference to the
Character or quality of the goods/service is
considered as inherently not capable of
distinguishing. If the mark consists of common
surname, name, name of place, section of society,
common geometrical devices, etc are not regarded
as Capable of distinguishing the goods or services.
The fundamental principle is that “traders should
not obtain any monopoly in the use of words as
trademarks to the detriment of the members of the
public, who, in the future and in connection with
their goods might desire to use them”.
Under Section 9(1)(b) trademarks which consist
exclusively of marks or indications which 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 services” shall not be registered.
The expression “may serve in trade” means that
there exists a reasonable likelihood that other
honest traders will wish to use the mark in question
to designate characteristics of the goods/services.
‘kind”
The expression “kind” would include the name of
the goods or services claimed and any words
recognized as indicating size or type, such as “old”,
“new” “Extra large” or “Large” or “Small”
would fall in this category and as such
objectionable in respect of any goods or service.
“Quality”
Laudatory words such as GOOD or BEST