Brand name Registration in India

An application for trademark registration or brand registration shall proceed to registration where no notice of opposition is filed against the mark or where the opposition was filed and subsequently decided in favor of the applicant. The trademark or brand is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued

Further, Does the Indian trademark law bestow protection to un- registered trademarks? What is the protection provided to an un-registered trademark in India?

If your trademark is not registered in India, then an action for passing off can be brought against a third party for misuse of an unregistered trademark. As per Section 27 (2) of the Trade Marks Act, 1999 nothing in the Act shall be deemed to affect rights of action against any person for passing of goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

Advantages of a registered trademark as compared to an unregistered trademark in India

The following are the benefits or advantages of a registered trademark over an unregistered trademark in India-

1.       Only a registered proprietor has the legal right to use the ┬« symbol on its Trademark, which forms the prestige of the brand.

2.       The proprietor of a registered trademark can use the symbol ® in India in respect of those goods or services for which the mark has been registered. Using the symbol ® unless the mark has been registered in India is unlawful. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark through mark may not be registered.

3.       Statutory right over the trademark.

4.       Exclusive right to lease, license or assignment of the trademark.

5.       Suit for infringement can be filed only by a registered proprietor. Unregistered proprietor can file passing off suit only against an infringer.

6.       A registered trademark proprietor can also file recordal of license of his trademark with the Trade Marks Registry.

7.       Right to seek civil, criminal and administrative remedies.

8.       Right to seek both civil and criminal penalties against counterfeiters.

9.       Constructive notice of ownership of the Trademark.

Trademark Registration India- Process

After filing trademark application in the prescribed form and payment of relevant fees, the mark will be examined, published and eventually proceed to registration, in case no opposition proceedings against the said trademark has been initiated or where an opposition against the said trademark was filed but was decided in favor of the applicant. Thereafter the trademark will be registered for a period of 10 years from the date of filing of the application in India and the certificate of registration will be issued. Pursuant to brand name registration the insignia ® can be used alongwith the registered trademark. The Indian Trademark Act also provides that if a registered trademark is not used for a continuous period of five years and three months from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non use

Period for registration of a trademark

Section 23 of the Trademark Act, which provides for the registration of a mark was amended in the year 2010. Pursuant to the amendment, a clause was added in the provision which provides that once an application has been accepted and not opposed or if opposed and decided in favor of the applicant, then the Registrar shall, unless the Central Government otherwise directs, register the trademark within eighteen months from the date of filing the Application. Once the Trademark is registered, the Registration Certificate is immediately issued by the Registry upon change of status of the application on Registry’s website.

Trademark designation in India – When can the TM and ™ insignia / symbols be used?

A trademark can be designated by the following symbols: An unregistered trademark in India can be depicted by the symbol TM or ™ The proprietor of a registered trademark can use the symbol ┬« in India in respect of those goods / services for which the mark has been registered. Using the symbol ┬« unless the mark has been registered in India is unlawful. Using symbol TM or ™ with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM or ™ in India. The aforementioned symbols can be placed at any place in the trademark so long as it depicts true and correct registration of the trademark.

Duration of Trademark Registration in India

Once the trademark is registered in India, it is valid for a period of 10 years from the date of application. The registration can then be renewed for a further period of ten years from the date of expiration of registration or of the last renewal of the registration

Correction of clerical error in the certificate of registration

 The Act also makes provision for amendment or correction of any clerical error in the certificate of registration and states that the Registrar may amend the register or certificate of registration for the purpose of correcting a clerical error or an obvious mistake.