Trademark Registration Process

Registration of Trade Marks in India

• Registering a trademark an application need be made in the prescribed format for different classes of goods in services and fee payable therefore shall be in respect of each such class of goods or services.
• Trademark registration in India used to take approximately about 18 months.
• It is important to search at the trade marks registry whether any other similar mark is registered or is pending registration.
• It is always recommended to take legal advises from Registered Trademark Attorney.

How to Apply for Registration of a Trade Mark?

• Application for the registration for other than a textile mark or for certification of Defensive mark must be made in triplicate in from TM 1.
• Application must be confined to goods comprised in one class only of the fourth schedule to the rule.
• A representation/ copy of the trade mark should be affixed to the application.
• 5 additional representations/ copies corresponding with the representation of the mark on the application must also accompany the application.
• The additional representation must contain the class and the specification of the goods.
• Name of the applicant, the period of the use, if any of the marks and such other particulars as may from time, be required by the registrar of Trade marks.
• Signed by the applicant or Attorney/Agent of the applicant.
• Where the applicant made for the registration of a series of Trade mark copies of representation to each Trade Mark of the series must accompany the application.
• Always take legal advice from Registered Trademark Attorney for appropriate registration and documentations.

Stages in the Registration Process

• Applicant or his Attorney shall present his application to the Regional office for
• Obtaining a Numbered Copy from Trademark Registry.
• Examination procedure and communication are communicated after submitting application in order for registration.
• Trade Mark Journal will carry the advertisement.
• After three months from the date of advertisement in the journal, if no opposition is filed the application proceeds for registration after paying the prescribed fees and the registration is entered in the Register of Trade Marks.
• Within a period of three months from the date of advertisement in the Trade Mark journal any person can give notice to the Registrar in form TM 5.
• Period of three month can be extended by 1 month by filing request in TM 44 for extension. The copy of the notice is communicated to the applicant and he is required to file a counter statement in form TM 6.
• Applicant had to file counter TM 6 within the stipulated time or the application is deemed to have been abandoned/ rejected.
• Counter should be filed with evidence.
• On completion of evidence, the registrar sends notice for hearing of arguments.
• After completion of arguments the registrar pronounces the order.
• The party aggrieved by the decision of the registrar may prefer an appeal to the High Court.
• If no appeal is filed, the application proceeds for registration of the mark.

Fundamental Principles of Registration

• Descriptive words, surnames and geographical name are not considered.
• Registration of a TM should not interfere with the bona fide use by any person of his own name business etc.
• Prior user enjoys similar rights that are acquired by a person who has registered a mark under the Act.
• Trade mark should not mislead the public as to the origin of the goods.
• Trade mark to be registered shall not cause hardship to any one.
• The life of a trade mark depends on its continuous use; non usage may lead to its eventual death.
• Trade mark, whether registered or unregistered being a property is assignable and transmissible.
• Opposition for granting registration of trade mark may be done even by members of the public.
• The onus of proving a case for registration of trade mark is on the applicant of the trade mark.

Stages for the Registration

An application for registration should contain:

• The name and address of the applicant
• His place of business
• The goods or services in respect of which registration is sought and the classes in which they fall
• Whether the mark is used or proposed to be used and any additional matter is required
• Appropriate office of the Trade Mark Registry.

On receipt a serial number is allotted which is used as a reference number for the application and subsequently for the Trade Mark when registered.

Objection to the Application

The following are some of the objections to the application, which may be raised:

• The application does not comply with any of the formal requirements and procedure under the rules.
• The mark applied for is not a trade mark within the meaning of the statutory definition.
• The mark is devoid of distinctive character or not capable of distinguishing or otherwise prohibited.
• The mark offends Section 11 etc.

Acceptance and Advertisement

• If the applicant or his Attorney satisfactorily meets all the objections raised by the office his application will be advertised in the Trade Mark Journal either as accepted or before acceptance.
• As a condition for acceptance of the applicant, the Registrar may require any amendment for modification of the application to impose any condition or limitation as he may think fit.
• In such an event the grounds for refusal or conditional acceptance has to be recorded.
• The registrar however has powers to withdraw his acceptance subject to certain conditions.

Amendment of application

Section 22 of the Act empowers Registrar to permit the correction of any error in the application or an amendment of the application.

Renewals of Trademarks

• Trademark has to be renewed for further 10 years after 10 years of registration, each time till the owner wish to continue it proprietary.
• Renewals has to be before validity expires or within one year of expiry with penalties.
• Any defaults in renewals beyond one year shall render ‘Lapse of Trademark’.

Flow Chart of Registration Procedure

Trademark Registration Process

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Why Trademark Registration is Necessary

What’s there in a Trademark?

Trademark is the most valuable asset, for a trademark owner. A Trademark is your product identity; it is communication between Company and consumer. It is important for every marketing and sales personnel to make sure that the Trademark for a product is as special and unique as the product. In this global world, company must ensure that it can use its Trademark worldwide where intends to sell the product as also on the internet (this includes Domain Name).

The Trademark or a Brand name is a:

¨      Word (COLGATE, PEPSI, COCA COLA);

¨      Symbol (PEPSI Logo, McDonald’s M Logo);

¨      Device/ Pictures (AMUL GIRL, PILLSBURY DOUGHBOY, A CAT IN PRAKASH TRANSPORTS, ASIAN PAINTS’ GATTU);

¨      Name (ALLEN SOLLY, RAYMOND VEIL, MOTILAL OSWAL, VIMAL);

¨      Surname (TATA, BIRLA, BAJAJ, MCDONALD’S, BATA);

¨      Signature (LOUIS PHILLIP, CADBURY);

¨      Letter (BMW, IBM, BB Soap, DHL, ICICI);

¨      Numeral (555 for Cigarettes, 777 and 501 for washing soap);

Or combination of any of these which identifies.

Under the Trademarks Act, 1999 the mark also includes:

¨      Color Scheme;

¨      Packaging;

¨      Shape of goods.

Any Trademark associated with a Service is known as a Service Mark e.g. ORANGE for Mobile phone service, BLUE DART for courier service.

Types of Trademarks:

1) Coined or Invented Trademarks:

These Trademarks are meaningless trademarks which enjoys highest amount of legal protection.

Example: - KODAK, RANBAXY, DABUR.

These marks also include common words but arbitrary in connection with the products or services.

Example: -TORTOISE for Mosquito coil, CAMEL for Cigarettes, APPLE for Computers, OMEGA for watch.

2) Suggestive or Semi-descriptive Trademarks:

Trademarks preferred by marketing people for creating association with the product without being descriptive, easily remembered and easy to promote.

Suggestive marks also includes plain dictionary words

Example: -SWATCH, TITAN, RELIANCE, INFO GATE, CYBERSURFER, HEAD & SHOULDER.

The legal protection for these types of marks is lower. Many times, degree of protection varies according to the Trademark, which could be considered as Semi descriptive or descriptive. There is a thin difference between semi descriptive or descriptive Trademarks and can be protected by acquiring secondary meaning with long, extensive and uninterrupted use.

3) Descriptive Trademarks:

Marketing people are keen on finding the name, which communicates product to consumers. But protection is granted by the law to such trademarks is low until is being used extensively and continuously for many years with huge sale and advertising to popularize the same.

Examples:- RAPID RICE, SWISS CHOCOLATE, LITE FOR BEER, EASY CASH, ANY TIME MONEY, HAIR & CARE, FAIR & LOVELY.

4) House Marks:

Trade Name or House mark help to identifies a Company or a business and services as the name of the Company or a business. Many times, a Group of Companies use its house mark on its products or services along with or without any other Trademark.

Example: - Godrej’s Jumpin and Godrej Storewell, Tata Tea, Tata Salt, tata Press, Nestle’s Nestea, Nestle’s Milo, Bajaj Scooter, Bajaj Majestic for Toaster, Birla White Cement, Britannia Goodday, Britannia Cream Treat, Amul Cheese, Dabur Honey.

5) Figurative Trademarks:

Any or Each of the above mark may be combined with figurative elements or marks and possible to use a figurative mark in isolation or alone. Such figurative elements are added or used exclusively for different markets where there is communication problem i.e. different languages are used in different markets.

The Figurative marks can also be like word marks of following types: 

¨      Meaningless, fancy or pure fantasy marks

¨      Arbitrary or marks without any relevance with the product

o   Example:- Half bitten apple for APPLE Computers, ARROW for Shirts

¨      Suggestive (Cow for MILKMAID), TWO ELEPHANTS pulling a chain in opposite side joined with FEVICOL)

¨   Descriptive (device or picture of Wheat for Bread, device of hand showing No. 1 for McDowell’s No. 1 Whisky, Running Deer through letter “S” for Savani Transports)

For its distinctiveness full legal protection is granted to such figurative marks.

Generic words as Trademarks

Generic, chemical or ingredient’s original name, however some of the Trademarks used generically and hence became generic and not protected as a Trademark.

Example: - ASPIRIN, THERMOS, KEROSENE ESCALATOR, GRIPE WATER, REFRIGERATOR

Today, many companies are facing dilution of their Trademarks due to its general use such as XEROX for photocopies, VELCRO for fasteners etc.

What is a good Trademark?

The best trademarks are:

¨Inventive;

¨Non – descriptive words; and

¨Distinctive devices.

A Trademark registers only if it is distinctive, it must different from other goods or services of a trade. Distinctiveness can be in the mark itself as in the case of invented words, non-descriptive words, and devices and can also be acquired by user in case of suggestive and descriptive words, surnames etc. depending upon extent of use, nature of the goods etc.

There are many marks which are purely descriptive and laudatory expressions or very common surnames which cannot be registered even with long use.

Example: - ALL WOOL, JANATA, PERFECTION, SIMLA, BOMBAY, NATIONAL etc.

It is therefore advisable to avoid choosing a word which are directly descriptive of goods or having direct reference to characters or quality of goods, common surnames and geographical names.

Example: - MILK MORE, MILKY WAY, SCOTCH WHISKY (Whisky manufactured at Scotland).

Following Trademarks cannot be registered under the Trademarks Law:

·       A mark, the use of which is likely to deceive or cause confusion, or is contrary to any law for the time being in force.

·     A mark in respect of any goods or description of goods which is identical with or deceptively similar to an already registered Trademark.

·       A mark which comprises or contains scandalous or obscene matter, or any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.

·        A mark which is otherwise disentitled to protection in a court.

·     A word which is commonly used and accepted name of any single chemical element or single chemical compound in respect of any chemical substance (generic marks).

·     Marks which suggest a connection with any living or recently deceased person may not be registered, except with the consent of that person or of his legal representatives (e.g. founder’s photo for KFC “KENTUCKY FRIED CHICKEN”, founder’s photo on HIMTAJ OIL).

Some do’s and don’ts of a good Trademark:

DO’S

¨  Choose a Trademark which is appealing to eye and ear, short, easy to pronounce and remember as well as easy to spell and write.

¨      Choose a Trademark which satisfies the requirements of registration.

¨      Conduct a complete availability search for a Trademark.

o   search at the Trademarks office in India

o   Search in the entire available database like industry magazines /periodicals, Yellow Pages, market resources etc.

o   Legal clearance is must to avoid any future disputes.

¨    Distinguish Trademark from words in printed matters or materials like Agreements, Invoice copies, Instruction materials etc, the Trademark should be written either in block letters or within quotation marks or always use appropriate symbols like ® or TM.

¨      Use a Trademark with correct style, spelling and in its exact format.

¨      Advertise Trademarks rather than Products or Services for creating a brand loyalty among the consumers. (e.g. COKE for COCA COLA, BAND – AID for first aid dressing from Johnson & Johnson)

¨   Register and maintain registration of the Trademark for many advantages like protection against infringement of trademark, exclusive use of the mark and prevent others from using, applying the said Trademark without proper authority.

¨      Consider registering a Trademark in all the countries of potential interest.

¨     Keep a watch on unauthorized use of identical and/or similar Trademarks and take appropriate action at the earliest to prevent such use.

¨     Acknowledge with a footnote, if you are using a Trademark of another party.

¨   Make and create awareness among the internal staff for the proper selection and use of a Trademark.

¨    Appoint a person to supervise and co-ordinate the adoption and use of the Trademarkto review advertising, packaging and other documentation for compliance with the basic rules of a Trademark and he should conduct a periodical audit to monitor compliance on all the printed matters including packaging.

¨    Use symbol ® on the shoulder of a mark in case of Registered Trademark and TM in case of unregistered Trademarks.

DON’TS

¨  Choose a Trademark which is descriptive or having direct reference to the quality or characteristics of the Product.

¨      Use plural words in a Trademark.

¨      Modify a Trademark from its possessive form.

¨      Adopt any generic word as a Trademark, Like ASPIRIN

¨      Use a Trademark as a noun but use an adjective modifying a noun. 

¨      Use a Trademark as a verb. Trademarks are for Products or Services and never actions. E.g. it is not XEROXING but Photocopying.

Trade Dress

Trade Dress is the overall appearance of the goods or their packaging or of advertising or the means for delivering goods or services. Trade Dress like a Trademark, is protectable if it is distinctive, inventive, arbitrary or suggestive features or combination of any its features will make the Trade Dress distinctive.

Trade Dress can be register as a Trademark, as one or more distinctive features will make the Trade Dress registrable as a Trademark butthe other form of Intellectual Property will be more appropriate such as Copyright or Design registration. Trade Dress is fully protectable under the law provided if it is original and distinctive.

The importance of the visual impact of a Trademark is very important. When a customer is looking for the product concentrates on:-

¨      Color scheme of the respective label and package,

¨      Graphical presentation

¨      Product name.

Companies therefore for the House Mark as well as for important Trademarks, uses special fonts, Colors and visual impact which are used as uniformity and in accordance with the guidelines by the management.

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Are you Dealing with Bounced or Dishonoured Cheque?

What is a Cheque?

As per Section 6 of the Negotiable Instruments Act, 1881 provides that “a Cheque is a bill of exchange drawn on a specified banker and not expressed to be payable otherwise than on demand and it includes the electronic image of a truncated Cheque and a Cheque in the electronic form.”

Reasons for Dishonouring a Cheque by a Bank

The principal reasons for dishonoring the cheque are as follows: -

1. A cheque is not in proper conditions specified in the Negotiable Instrument Act.
2. A drawer signature's on cheque differs from specimen signatures recorded with the bank.
3. A cheque is stale (in circulation for more than 6 months) or postdated.
4. Amount expressed in words and figures differ.
5. Cheque mutilated (cut torn part of cheque missing)
6. Material alternations (change in date, crossing, amount, name of payee etc. on cheque) need confirmation by the drawer.
7. Over writing or order cheque not properly authorizes.
8. Do not tally with directions contained in the crossing.

When a Banker is Justified in Refusing Payment

A banker is justified in refusing payment of a customer's cheque on the happening of any one of the following events.

1. Notice of the customer to refuse payment of the cheque.
2. Notice of the customer's death.
3. Notice of the customer's insanity
4. Notice of the customer's bankruptcy.
5. In case of a company, notice of its winding up.
6. Notice of a court order.
7. In case of trust accounts receipt of information that the customer contemplates a breach of trust.

Dishonour of Cheque is a Serious Offence

Dishonor of cheques is a criminal offence under section 138 to 142 of the Negotiable Instrument Act, 1881 by an amendment.

1. In order to make a person liable for Charges/ prosecution, the following criteria/ conditions must met – 
2. The cheque is presented within its validity from its date. 
3. A demand notice is sent by the Payee (person/ company/ entity on name the check is issued) to the drawer (person/ company/ entity issued the check) within 30 days from the Payee's receiving the dishonor instruction/ report from Bank; 
4. The drawer (person/ company/ entity issued the check) of the cheque not been able to pay the amount mentioned on the check to the person check is issued within 15 days of receipt of the notice; 
5. Complaint is to be made only by the payee or holder in due course; 
6. Cheque which is dishonored must be issued for the discharge/payment of a debt or any other liability, which is legally enforceable. Thus, an action cannot be initiated for the dishonor of a cheque that is given as a gift.
7. The offence is committed only when the cheque is dishonored and not when it is issued, Example: - At the time of its issuance of the cheque, there is no balance in his account, the drawer commits no offence if, when the payee present the cheque in the bank, he arranges the payment with the bank and the check is honored/ passed/ paid by the bank.

Procedure for Action

1. Notice should be sent within period of 30 days from the date of the bounce of the check.

2. For Limited Companies and Partnership concerns, notice should be sent to the Company, the Partners concern and to all the Directors / Partners also.

3. For proprietary firms, notice should be addressed to the Proprietor only.

4. Notice should be sent preferably by
                        i. Speed Post with Acknowledgement Due (SPAD)
                       ii. Registered Post with Acknowledgement Due (RPAD)
                      iii. Postal receipt to be kept as the proof of dispatch.
                     iv. AD card to be kept along with the notice and Postal receipt.
                      v. If AD card does not come back or received without signature or date is not clearly mentioned then delivery confirmation receipt have to receive form the post office.

5. During the 15 days’ time period to make payment from the party it is advisable to follow up with it to put pressure and if the party would not pay the dues then preparation must begin for filing of the complaint after expiry of 15 days period within 45 days from the date of the receipt of the notice by the Party.

6. A cheque cannot be presented after a notice has already been sent to the party.

7. After filing the complaint in the Court, a verification statement is sworn before the Magistrate and original documents are produced in the Court. Then the Court issues Summons against the accused persons named in the complaint. If in case the accused persons do not attend the Court after service of summons, the Court would issue first Bail able Warrant and then Non-bail able Warrant.

8. Where the accused has been declared absconder and Proclamation has been issued, the Magistrate on being satisfied can order the attachment of the property of the accused, the attached property will vest in the hands of the Government; Complainant can only participate in bidding for the purchase of the said property if Government decides to sell it.

Banks Dealing with Dishonour of Cheques of Value Less than “1 crore”

(i) Returning time for dishonoured cheques

The dishonored Cheques are required to be returned / dispatched to the customer promptly without delay, in any case within 24 hours of dishonor.

(ii) Procedure for return/dispatch of dishonoured cheques

a) The payee branch should return dishonoured cheques presented through clearing houses strictly as per the return discipline prescribed for respective clearing house in terms of Uniform Regulations and Rules for Bankers' Clearing Houses.

b) The collecting branch on receipt of such dishonoured cheques should dispatch it immediately to the payees / holders within 24 hours of receipt of the instruments.

c) If cheques presented directly to the payee branch across the counter branch should return such dishonoured cheques to the payees/ holders same day/or next day, in case of dishonour due to insufficiency of fund.

d) Cheques dishonoured should be returned along with a memo ofreason for dishonor by bank.

(iii) Frequent dishonor for the same account

a) If the dishonour of a cheque of value of less than rupees one crore drawn on a particular account of the drawer on 4 occasions during the financial year for insufficient funds in the account, no fresh cheque book would be issued and branch may close the account after issuing 30 days’.

b) The branch may consider closing current account with the prior and proper notice to the customer. However, in respect of advances accounts such as cash credit account, overdraft account, the need for continuance or otherwise of these credit facilities and the cheque facility relating to these accounts should be reviewed by appropriate authority.

c) If an account is having cheque book facility and ECS mandate is also registered, then the incidents of dishonour will be taken into account both for dishonour of cheque and failed ECS for computing the number of dishonour of cheques/failed ECSs.

Branch may consider for closing the account after serving 30 days’ notice to the customer in the event of subsequent dishonour of cheque/ ECS mandate in the account.

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