IPR Psda Jai
IPR Psda Jai
Investing your time and money to build a particular brand and seeing the same brand name
being used by another, robbing you of your hard-earned brand reputation is not an agreeable
state of affairs. Many a time, trademark (TM) owners end up in protracted litigation because
when the time was right, they did not do trademark registration in India of their brand name.
Trademark registration process of the brand name is not a difficult task. A few simple steps, as
explained below and you would have the much-needed legal protection of your brand name
registration in India.
Many entrepreneurs do not comprehend the importance of a TM search. Having a unique brand
name in mind is not good enough reason to avoid a TM search. TM search helps you to know if
there are similar trademarks available and it gives you a fair picture of where your trademark
stands, sometimes, it also gives you a forewarning of the possibility of trademark litigation. Why
waste your money in time-consuming trademark litigation later when you can choose to avoid it
in the first place?
After you are sure that your chosen brand name or logo is not listed in the Trademark Registry
India, you can opt for registering the same. The first step is to file a trademark application at the
Trademark Registry India. Nowadays, filing is mostly done online. Once the application is filed,
an official receipt is immediately issued for future reference.
Step 3: Examination
After a trademark application is filed, it is examined by the examiner for any discrepancies. The
examination might take around 12-18 months. The examiner might accept the trademark
absolutely, conditionally or object.
If accepted unconditionally, the trademark gets published in the Trademark Journal. If not
accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in
the examination report and a month's time would be given to fulfill the conditions or response to
the objections.
Once such response is accepted, the trademark is published in the Trademark Journal. If the
response is not accepted, one can request a hearing. If in the hearing, the examiner feels that
the trademark should be allowed registration, it proceeds for publication in the Trademark
Journal.
Step 4: Publication
The step of publication is incorporated in the trademark registration process so that anyone who
objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4
months from publication there is no opposition, the trademark proceeds for registration. In case
there is opposition; there is a fair hearing and decision are given by the Registrar.
Step 5: Registration Certificate
Once the application proceeds for trademark registration, following publication in Trademark
Journal, a registration certificate under the seal of the Trademark Office is issued.
Step 6: Renewal
The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand
name registration can be protected perpetually.
As seen from the above, trademark registration in India process does not require much effort. It
is a simple process but one which is nonetheless very important for brand name registration.
We, at Intepat, can help you with the entire process of registration without you worrying about
deadlines and responses. Hence, understand the power of your brand name registration and
take steps in protecting it today.
Registration form
ASSIGNMENT OF TRADEMARK
GENERAL UNDERSTANDING:
As physical properties are transferred, the same way trademarks are also transferred.
This transfer of trademark is called Assignment of trademark. In general terms,
Assignment means transfer of title, rights, interest and benefits from one person to
another person.
Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and
benefits to other person. The transferring party is called as “Assignor” and the receiving
party is called as “Assignee”.
STATUTORY DEFINITION:
Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in
writing by the act of the parties concerned;
WHO CAN ASSIGN A TRADEMARK:
As per section 37 of the Trade Marks Act, 1999, the person entered in the register of
trademarks, as the proprietor of a trademark, shall have power to assign a trade mark
and to give effectual receipt of for any consideration for such assignment.
The term "license" or "licensing" is nowhere to be found in the Trade Marks Act, 1999. The
concept and the laws governing licensing of trademarks are found in Sections 48-55 of the Act.
It can be said that the term "registered user" in the Act is synonymous with the term "licensee".
Under the 1999 Act, "permitted use" as defined in Section 2(1)(r) means the use of a registered
trademark by a third person as a registered user; as well as, use by a third person by the mere
consent of the registered proprietor. The use of the word "may" in Section 48(1) of the Act
makes it apparent that registration of a licensing agreement is not mandatory for it to be
licensed. The agreement, however, must be in writing as oral licensing is no licensing. Though
the Act is silent on the issue of licensing of an unregistered trademark, such licensing is deemed
lawful under common law and is commonly referred to as common law licensing. Nothing in the
Act suggests that the rights of a licensee in the case of an unregistered trademark are different
from that in the case of a registered trademark.
Trademark licensing has become a common practice as it benefits both the licensor and the
licensee. The licensor earns money by way of royalty, while the licensee gets to commercially
exploit the mark. In addition to monetary benefits, the licensor also benefits due to the
expanding reach and popularity of the mark. But, if left unchecked, licensing could also harm the
repute of the mark. Hence, it is of utmost importance to incorporate clauses with respect to
quality checks of goods or services in the license agreement. Section 49 of the Act mandates
that licensing agreements shall state the degree of quality control. The object behind this
provision is that a connection in the course of trade between the proprietor and the registered
user should reflect in the licensed use of the mark. The Bombay High Court in UTO Nederland
BV v. Tilaknagar Industries Ltd1 held that the license could have been rendered invalid, had the
performance and terms of the agreement suggested existence of facts which implied no quality
control. It was held in Bowden Wire v. Bowden Brake2that a trademark license ceases to be
valid if there is no connection in the course of trade with the registered proprietor. In the famous
Barcamerica case3, the Court held that "naked and uncontrolled licensing" results in the
trademark ceasing to function as a symbol of quality wherein it appears that the registered
proprietor has abandoned the trademark and in such a scenario he may be stopped from
asserting his rights over that mark.
As discussed above, the registration of the license agreement is not mandatory; however, it is
advisable to do so since it creates a record that becomes useful in the case of any dispute in the
future. By way of registration of the license agreement, a licensee becomes a "registered user"
in lieu of Section 49. For the registration of a registered user, a joint application is to be filled to
1
MANU/MH/1827/2011.
2
RPC 45 at 580.
3
Barcamerica International USA Trust v. Tyfield Importers Inc, 289 F.3d 589 (9 th Cir. 2002)
the Registrar through the TM-28 Form within six months from the date of the agreement. The
registration process is hereby summarised in a few steps:
1. Filling of TM-28
The form TM-28 is to be filled in triplicate along with the following documents:
The precise relationship between the registered proprietor and the proposed registered
user.
Particulars showing the degree of control by the registered proprietor.
Goods & services in respect of which registration is proposed.
Conditions or restrictions imposed by the license.
Period of permitted use of the mark.
The filing of application through Form TM-28 can be done either online or offline to the
Registrar.
The Registrar may accept the application either completely or conditionally. A conditional
acceptance takes place when conditions/restrictions/limitations are put on the permitted use
provided in the license. In the case of conditional acceptance, the registrar will issue a notice to
the applicant.
On the issue of notice of conditional acceptance by the Registrar, the parties may apply for a
hearing. On the application of hearing, the Registrar may appoint time within two months. After
the hearing, the Registrar may accept completely or conditionally, or reject the application
altogether. The order of the Registrar is to be communicated in writing. It is to be noted that if
the party fails to apply for hearing within one month of the issue of notice, the registrar may
accept the agreement with the conditions and limitations he imposed.
7. Entry in Registrar
When accepted, the Registrar records the proposed registered user as a registered user in the
register.
After the recording takes place in the register, the Registrar needs to ensure that notice to every
other registered user of the trademark (if any) is issued. The Registrar also needs to ensure that
this fact is inserted in the Trade Mark Journal.
The Trade Mark Act, 1999 talks about "assignment" and "transmission" of trademarks and does
not explicitly mention anything about "license". Therefore, it is pertinent to understand that there
are some basic differences between assignment and licensing of trademarks. An assignment is
a permanent transfer of ownership of a trademark, whereas, licensing is a temporary transfer
with respect to certain rights for using a trademark. Furthermore, a license can be revoked
unlike in the case of assignments. Therefore, assignments result in a change of ownership
wherein the assignee becomes the owner of the trademark, unlike licenses where only limited
rights are transferred to the licensee for a particular time period.
The licensing of trademarks is an effective practice for the regulated exploitation of the mark. It
helps both the licensor and the licensee in the growth of their respective businesses.
Additionally, it results in the development of the brand image as the licensee is required to
maintain a certain degree of control over the standard and the quality of the goods and services
that he sells or provides under the mark.
Lisence of trademark form