purposes of the Act and Central Government may appoint such other officers to discharge duties under superintendence and direction of the Registrar. The Trade Marks Registry is at Mumbai and its Branches are located in Calcutta, Chennai, Ahmedabad and New Delhi, each having its own territorial jurisdiction.

Filing

Application for registration of a trade mark should be filed with the Office of the Trade Marks Registry under whose territorial limits the applicant has its principal place of business in India. In case the applicant does not carry on business in India, the application has to state an address for service in India. The appropriate office of the Trade Marks Registry will be the one within whose jurisdiction the address for service falls. With the coming into force of the Trade Marks Rules, 2017, the old forms have been replaced by 8 new forms (Forms TM-A, TM-M, TM-R, TM-C, TM-O, TM-P, TM-U and TM-G). The old Form TM-48 (Authorisation of Agent) has now been replaced by Form TM-M and Power of Attorney. In case use is claimed in India, an applicant is required to file an affidavit testifying use along with supporting documents.

Official fee

The official fee per mark/per class payable varies as per the category of the applicant. As per the Trade Marks Rules, 2017, applicants are categorized as Individual/Startup/Small Enterprise and Others. The fee payable varies as under:

Official fee payable by Individual/Startup/Small Enterprise for filing of an application is half of the fee payable in all other cases.

Official fee payable is reduced by 10% in case of e-filing.

In case the applicant falls under ‘Small Enterprise’ or ‘Startup’ and wishes to avail of the reduced filing fee, it will be required to provide an appropriate certificate/declaration from concerned authority.

International registration

Under the WIPO-administered Madrid system, a trade mark owner may protect a mark in over 100 countries including India (with effect from July 8, 2013), by filing one application, in one language, with one set of fees, in one currency. Applicants wishing to protect a mark under the Madrid system must have applied for or secured registration in respect of the same class with substantially similar description of goods or services. The system provides a cost-effective and efficient way for trade mark holders to secure and maintain protection for their marks in multiple countries.

Protection

Trade mark which prima facie is devoid of any distinctive character, serves in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin; has become customary in the current language or in the bona fide and established practices of the trade will be refused registration, unless, the same is a well-known trade mark or has acquired distinctive character on account of its use. Further, the mark which is of such nature as to deceive or cause confusion; contains anything which is likely to hurt religious belief of citizens of India or scandalous or obscene matter; use whereof is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, will not be allowed registration. The registration of names of chemical elements or international non-proprietary names (as declared by WHO) are prohibited under the Act.

The Act provides for inter alia registration of service and collective marks, widened definition of a mark, protection of well-known trade marks, establishment of Appellate Board for speedy resolution of appeals and cancellation actions, registration of certification trade marks at the discretion of the Registrar (earlier Central Government), period of registration for ten (10) years, enlarged scope of infringement and so on.

The Act even defines a well-known trade mark and the Registrar is obliged to protect a well-known trade mark against identical or similar trade marks and consider the bad faith whilst determining registrability. Further, for determining a mark to be well-known, the Registrar has been directed not to require as a condition, among others, that the mark has been applied for/registered/used in India or applied for/registered/well-known in any other jurisdiction or that the trade mark is well-known to the public at large in India.

With the advent of the Act, registration is no longer confined to traditional marks but includes a mark which is capable of:

1. being represented graphically; and

2. distinguishing the goods or services of one person from those of others.

Registration of sound, motion, colour, smell and touch marks and shape of goods may be sought.

Term

The mark is registered for a term of ten (10) years from the date of application. It may be renewed for periods of ten (10) years thereafter.

Opposition/Cancellation

Any person may file an opposition to an application for registration that has been advertised or re-advertised within the time prescribed. The grounds of opposition may be that the mark is not registrable under the Act, it violates the proprietary and statutory rights of another, contravenes any other law, the applicant is not the proprietor etc. As per the Trade Marks Rules, 2017, Counter-Statement may be filed on the basis of the Notice of Opposition uploaded in the online records. If Counter-Statement is so filed, the requirement of service of the Notice of Opposition upon the applicant is dispensed with. Cancellation may be initiated by a person aggrieved on grounds similar to an opposition apart from basing the action for non-use [five (5) years from actual registration].

Exclusive rights

Registration under the Act confers exclusive right upon the owner of the registered trade mark to use the same in connection with the goods and services covered thereunder and to obtain relief in case of infringement. Broadly, a registered trade mark is infringed if a person, without due permission, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered. In case the trade mark is not registered, then an action may be initiated for passing off. This is recognized in the Act. The Act also recognizes the use of trade marks in comparative advertising, provided use is in accordance with honest practices and does not take unfair advantage of or is detrimental to the distinctive character or repute of the trade mark. The trade mark owner may seek relief of injunction, damages or accounts of profits and delivery-up.

Offences

Falsification of a trade mark, falsely applying a trade mark and trade description and selling goods or providing services bearing false trade mark or false trade description are offences under the Act. Imprisonment from six (6) months to three (3) years and a fine ranging from fifty thousand (INR 50,000) to two lakh rupees (INR 200,000) are envisaged in the Act. Lesser sentence or fine may be imposed at the discretion of the Court.