TRADE MARKS
SNA
Subramaniam
& Associates
Attorneys-at-Law · Patent and Trademark Agents
Our trade marks department represents a dazzling variety of brand owners, from Fortune 500 companies to sole proprietorships. The brands we prosecute and bring to eventual registration are familiar names in every sector - the hospitality industry, home and office interiors, electrical appliances and electronics, airlines and automobiles, food and dairy, pharmaceuticals and healthcare, apparel, shoes, consumer products, cosmetics and accessories and the service industry. We are actively engaged not only in securing trade mark registrations in India and abroad, but also in defending and enforcing said registrations. We routinely file and argue trade mark oppositions at the trade marks registry on behalf of our clients, with a truly spectacular track record.
Our trade marks team is able to provide a full range of trade mark related services, including filing and obtaining registrations across the world, portfolio planning, brand management, investigations and trade mark searches. The team also works hand in hand with the SNA litigation department, assisting them during trade mark litigation and domain name disputes and enforcements. We have been instrumental in retrieving - and successfully enforcing against misusers - trade marks on the brink of becoming generic. We repeatedly pull chestnuts out of the fire, and we do it with flair.
How do Trade Marks work in India?
The use and protection of trade marks in India is governed primarily by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.
In section 28, the Trade Marks Act, 1999, prescribes the rights conferred by the registration of a trade mark as follows:
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Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
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The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
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Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
The Madrid Protocol
Like patent rights, trade mark rights are jurisdiction specific. Making an application for registration of a mark in India will entitle the registered proprietor to exclusive use of said mark in India. This is what the process will look like:
APPLICATION
An application on the prescribed form with the prescribed fee will be received at the Trade Mark Registry. This may be submitted at any branch of the Registry.
EXAMINATION
The application will be examined by the designated Examiner, and with the approval of the Supervisor, an Examination Report will be released to the applicant (or their agent).
PUBLICATION
Once the objections raised in the Examination Report have been dealt with by the applicant - or if no objections were raised in the first place - the mark is published in the Trade Marks Journal. This is referred to as "advertisement before acceptance".
REGISTRATION
From the date of advertisement, any interested party is granted four months to oppose the mark in question. Subject to the outcome of any such opposition, the mark will then proceed to registration.
India's accession to the Madrid Protocol in July 2013 means that business and brand owners in India may now also apply for trade mark registrations internationally (in any number of the 97 member states of the Protocol) with a single application form, in a single language and with one set of fees. If an applicant chooses to file an application in India through the Madrid Protocol, the application will be sent to WIPO from the applicant's "home" IP office. WIPO will proceed to conduct a formal examination and publish the mark in the WIPO Gazette of International Marks, subject to its approval. Following this, WIPO will notify each contracting state designated by the applicant on the application, the respective IP offices of each of which will then conduct a substantive examination of the application within the prescribed time limit. Once WIPO has been notified of their individual decisions, the applicant will be informed of these outcomes and they will be published in the International Register.