INDIAN TRADEMARK PRACTICES (CGPDTM) SUBASANI.P Examiner of Trademarks, Chennai

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1 INDIAN TRADEMARK PRACTICES (CGPDTM) By SUBASANI.P Examiner of Trademarks, Chennai

2 Legal set up The Trade Marks Registry was established under the Trade Marks Act At present, it functions under the Trade Marks Act 1999 & The Trade Marks Rules The Trade Marks (Amendment) Act 2010, has been passed and published in the official Gazette of the Government of India. The Trade Marks Rules 2002 has been amended from time to time; and it is being replaced with the Trade Marks Rules 2016, the draft has already been published. 2

3 What is a Trademark? A Trade Mark is a mark, adopted for distinguishing, in the course of trade, the goods or services of one person from those of others. A trademark may be- Word Device/picture Label Logo Name Signature Letters Numerals Shape of the Goods Combination of Colours

4 Objects & functions of a Trademark To identify the goods/services. To distinguish the goods/services of the proprietor from those of others. To guarantees its unchanged quality, and To advertise the goods/services.

5 Benefits of Registration of a trademark Prima facie evidence of proprietorship of the trademark exclusive right to use the trademark May assign or license the trademark as any other property Enjoy the Goodwill

6 REQUIREMENTS TO REGISTER A TRADEMARKS Graphical representation of Mark. Capable of distinguishing the goods or services of one person from those of others. It should be used or proposed to be used. 6

7 Steps for registration of trademark in India Select a good trademark Apply for registration Classify your goods & services Appropriate office and Respond to office queries/notices 7

8 Selecting a good Trademark DO S Go for a trademark which is- Easy to speak & spell (in case of word mark), Appealing and easy to remember or recollect. invented or coined word, unique monogram, logo or a geometrical device

9 Selecting a good Trademark DON TS Don t go for a trademark which consists of- laudatory or descriptive matters (such as best, perfect, super etc words or pictures of the product concerned) geographical names. common surnames, names of a community or persons a matter prohibited by law to be used as a trademark a matter that is same/similar to an already existing trademark in the market.

10 Protecting the trademark in India Register TM with the Registrar of Trademarks in Indian Trade Marks Registry The Controller General of Patents, Designs and Trade Marks is the Registrar of trademarks 10

11 Administrative set up GOVERNMENT OF INDIA Department of Industrial Policy & Promotion, Ministry of Commerce & Industry Controller General of Patents, Designs & Trademarks (CGPDTM) Patents Designs Trademarks Registry (TMR) Geographical indications NIIPM COPYRIGHT Ahmedabad Delhi Mumbai (Head office) Chennai Kolkata 11

12 TERRITORIAL JURISDICTION OF TMR OFFICES MUMBAI: The State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa AHMEDABAD: The State of Gujarat, Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli. KOLKATA: The State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman and Nikobar Islands. New Delhi: The State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh. Chennai: The State of Andhra Pradesh, Telangana, Kerala, Tamilnadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Islands. 12

13 Technical set up of the TMR web based Trade Marks System (TMS) Digitization All branches of the TMR are connected with the Central Server located at Delhi. All the actions done by the office staff through the TMS is recorded in the Central Server on real time basis. 13

14 Technical set up, contd. The Official Website of CGPDTM provides gateway for online filing of trademark applications Actual status of a trademark application Public Search Classification of goods and services International non-proprietary names Trademark journals Annual reports, Public notices & other important information Dynamic trademark utilities 14

15 Appropriate form and fee At present there are many forms prescribed for filing new applications depending on the nature of application such as Form TM-1, TM-2, TM-51, TM-52 TM-3, TM-8 etc. Fee ordinarily Rs.4000/-per class

16 Classification of goods and services For the purpose of registration of trademarks, the Registrar classifies goods & services in accordance with international classification of goods and services (NICE Classification) [S. 7 (1) of the Trade Marks Act 1999 and Rule 22 of the Trade Marks Rules 2002] Goods are classified in classes from 1 to 34, and services are classified in classes from 35 to 45 The classification of goods & services are published on the office website

17 Online filing of TM applications Class III Digital Signature (n)code Solutions, TCS, Safe Scrypt & e- mudhra Fee through Net-banking in comprehensive e-filing services for trademarks. online filing of TM forms and Reply to Examination report is also available

18 TRADEMARK REGISTRATION PROCEDURE AND PROCESS 18

19 Steps involved in registration process Receipt of applications, data entry & digitization [at Branch Offices] Examination of applications, approval by Supervisors, release of ERs [centrally at TMR Mumbai] In case of objections Response by applicant- Consideration of response [at Branch Offices Objections not waived after Response- Show Cause Hearing [at Branch Offices] In case there are no objections/objections waived - Publication in the Trade Marks Journal No opposition/opposition decided in favor of the applicant- Application proceeds to registration In case of opposition, opposition proceeding [at Branch office] Opposition allowedapplication refused Objections not waived- Application refused Appeal may be made before IPAB,

20 RECEIPT & EDP SECTION Generating receipts to fee papers. Allotment of Application Number. Data Entry. Digitization of records (Fee/ Non-fee). Vienna Codification.

21 EXAMINATION After Data Entry/Digitization, forward the application to Examination. Accepted/objected. Dispatched Examination Report through module.

22 PRAS & PARM SECTIONS Pre-Registration Amendment Section Pending Application Record (Management) Module 22

23 SHOW CAUSE HEARING Those Application which are set for hearing in the PARM Section will move to Show Cause Hearing Section. If the Hearing Officer is satisfied with the reply to examination report with supporting documents, he/she accepts the application and advertises the application in the Trade Marks Journal and if not satisfied he/she refuses the application.

24 JOURNAL PUBLICATION The Applications which are accepted by the Examiners/Hearing officers are published in Trade Marks Journal.

25 OPPOSITION Once the application is advertised in Trade Marks Journal, it is open for public to file opposition within four months from the date of advertisement of the application in the Trade Marks Journal. Then the opposition proceedings will start. After completion of the opposition proceedings the Registrar either accepts or refuses the application. If the Registrar accepts the application the Opposition is dismissed. If the Registrar refuses the application the Opposition is declared as abated.

26 REGISTRATION After the journal publication, if no opposition is filed within the prescribed period then the Application will be move to registration section for issuing registration certificate. In opposition matters too if the application is accepted for registration the application is moved to registration section for issuing registration certificate.

27 Validity of Registration Validity is for 10 years Thereafter it can be renewed Fee is Rs 5000/-

28 Thank you 28

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