Trademark Act, 1999 in India

The Trademark Act, 1999 was created to make Indian trademark law match international rules from the TRIPS Agreement, 1994. This came after the cancellation of the Trade and Merchandise Marks Act, 1958. This act helps to maintain the trademark rights of a business. Any business or individual can do trademark registration under the Trade Marks Act, 1999, to obtain statutory protection and enforceable rights over a mark. In this blog, you will get guidance on the Trademark Act in India.

What is a Trademark?

A trademark refers to a sign, name, word, logo or design of a brand. People can identify a product or service and know its source. Businesses use this to make stand out of their goods or services from others in the market. So, a trademark registration gives the owner the legal right to protect their mark from unauthorized use. This means they can prevent others from copying or misusing the brand. It protects the brands and reputation of a specific business.

What is The Trademark Act, 1999?

The Trademark Act 1999 means the primary law in India. This law governs the registration, protection, and trademark enforcement. As per the act, businesses can register goods-related marks and service marks. The features can include:

a) Multiclass applications of Trademark registration for 10 years

b) Renewal and registration for ten years,

c) Recognition of well-known trademarks

d) Protection against infringement

e) Assignment and licensing

f) Opposition proceedings

g) It gives protection of brand from passing off

The Act supports statutory rights through registration and common law rights by use. The Office of the Controller General of Patents, Designs and Trade Marks handles the Act. The Ministry of Commerce and Industry, Government of India maintains it. Thus, it gives the protection, registration and prevention of fraudulent use of trademark. The trademark owner has the exclusive right to use the marks.

What is The History of Indian Trademark Law?

Until 1940, trademark protection in India depend on the common law. It is similar to those applied in English law before 1908. No official government system existed for trademark registration or enforcement before formal laws established one.

The first statutory law of the Trade Marks Act, 1940, has created a legal framework for trademark registration and protection in India. The Trade and Merchandise Marks Act, 1958 has replaced this act. This act gives a structured legal foundation.

The Trade Marks Act, 1999 has been created to follow the international obligations under the TRIPS Agreement (1994). It was also enacted to modernize the system. This act came into effect from 2003. It repealed the previous Trade and Merchandise Marks Act, 1958.

The 1999 Act introduced new provisions such as service mark registration, multiclass applications, and extended registration validity to ten years. It also codified some principles of unregistered trademarks, while others still rely on judicial precedent.

The Trademark Act 1999 has established new provisions. It contains:

a) Service mark registration,

b) Multiclass applications

c) Extended registration validity to ten years

d) It also put some principles of unregistered trademarks. In contrast, other principles still depend on past court decisions.

Key Objectives of The Trademark Act, 1999 in India

Listed below are the key objectives of the Trademark Act, 1999 in India:

Legal Protection for Trademarks

It gives a statutory framework for the trademark registration and enforcement in India. It grants exclusive rights to the registered owner.

Compliance with International Standards

The act matches with the Indian trademark laws with global practices. It is specifically aligns with the TRIPS Agreement (1994). This helps to meet certain standards, gives protection of brand, builds trust, etc.

Recognition of Service Marks

It allows the registration of service marks of a trademark for goods. This gives a long term protection to service-based businesses.

Prevent Infringement and Misuse

A trademark owner can prevent unauthorised use, imitation, and passing of trademarks. This helps to build customer trust and support business growth.

Support Fair Trade and Consumer Interest

The Trademark Act proves that it protects trademarks from misuse. It keep maintain the brand image and makes brand stand out in the market.

Encourage Brand Building

A valid trademark gives innovation, brand development, and business identity. This supports economic growth and brand value.

Simplify Trademark Processes

This simplifies the process of trademark registration in India. It includes multiclass applications, renewal process and recognition of well-known marks. This maintains administrative efficiency and clarity.

Trademark Registration Under The Act

A person must follow the provisions that Section 18 of the Act lists to apply for a trademark. The Section states that a person must apply for a trademark in a writing format as per the registration. The application must include:

1. The name of the mark
2. Goods and Services
3. The class of goods and services
4. The period of the use of the mark
5. The personal details of the applicant like name, address, adhaar card [not mandatory], etc.

Infringement of Trademark Under The Act

The infringement of a trademark refers to a violation of the trademark rights. A trademark can be infringed if a person makes an unauthorized use of a trademark. It can also be said that there is a similarity on goods or services of a similar nature. In such a situation, the court checks if a similar brand name causes confusion to customers about it. This means, whether the customer get the actual brand after purchasing.

If there is an infringement of a registered trademark, the person has the right to file a suit for damages. There are certain conditions for filing:

a) The person needs to be the registered owner of the trademark to file the suit (plaintiff).

b) The person who is infringing (defendant) should be using a similar mark of the plaintiff. So, this can lead to confusion as one another.

c) Whether the use is likely to cause confusion among the public.

d) The defendant use the mark should be in the course or similar goods or services of a trademark.

Trademark Classification in India

Section 7 of the Trademark Act, 1999 needs the trademark classification as per the international classification of goods and services. There are 45 classes of trademarks for goods and services. The international community knows the international classification system as the Nice Classification (NCL). They created this in 1957 during the Nice Agreement. As per the NCL, Classes 1 to 34 defines goods and the Classes 35 to 45 outline services.

Opposing a Trademark Registration in India

During registration, the public gets the opportunity to oppose the trademark registration. Anyone can file the opposition of registration. It can include a customer, competitor, or any member of the public.

In the trademark registration process, the mark will be published in the Trade Mark Journal. Once published, public has the right to file an opposition to it within three months. They can extend the duration of three months by no more than one month in special cases. Applicants can file for it at the Trademark Registrar’s Office. Opposition is filed before the Registrar of Trade Marks, not before any appellate authority.

It includes specific information and documents to file an opposition. Here they are:

1. Trademark application details against which opposition is being filed.
2. The details of the previous mark in which there is an infringement on the registered mark. It can be an already registered mark or pending registration.
3. The details and information of the filing party.
4. Grounds upon which such opposition is based on. This means the reasons for the opposition

Registration of Trademark Under The Trademark Act in India

The Trademark registration process is managed by the Trade Marks Act, 1999. Here are the steps for registering a trademark:

Step 1: Trademark Search

The first step to a trademark registration is conducting a trademark search. One should always check whether his name or logo is not similar to others. You can search the same on the Public Search tool from the IP India portal to avoid rejection or delays. In the trademark search, you will get the details of the existing trademarks in the Trademark Registry.

Step 2: Identify The Correct Trademark Class

The Nice Classification system divides trademarks into 45 classes of goods and services. Here, you have to verify the official classification list according to your needs. This will avoid rejection, complications, or delays of your application.

Step 3: Filing of Trademark Application (Form TM-A)

An applicant must collect all the necessary documents before applying for a trademark registration. Then, the TM-A form, that is, the trademark application form with all the details, has to be submitted. In case you opt for online, you need to visit the IP India official portal. You can also file it offline at the nearest Trademark Registry Office. You need to pay the required fee.

Step 4: Trademark Office Examination

Once you have submit your application with all the details and documents, It will be checked by the Trademark Office. The examiner verifies that your trademark is not similar to any of the ones already present. If your application is found to meet all the requirements, then it will move to the next step. In case the registrar get some issues, the application will be put on hold. You will also be informed of that.

Step 5: Objection By The Registrar

If the registrar notices any issues, they may object to your trademark. This may be in a situation where the mark is similar to another one or uses a generic name. A formal objection may be raised under Section 9 or 11 of the Trademarks Act. The notice will also carry the hearing date. If you get this notice, that does not mean it is a rejection.  It state that, you should rectify the mistakes in the application if they appear.

Step 6: Responding to the objections

Once an objection received, you must respond within 30 days of its receipt. You need to give clear explanations, valid supporting documents, and strong reasons for any objection. It must be drafted in such a way that it can sort out objections to avoid delays in the process. After the registrar is satisfied with the response, an application proceeds with further steps. If not, it may put your application on hold, which may affect the approval.

Step 7: Publication in The Trademark Journal

Once a registrar accepts your trademark application, it is published in the Trademark Journal for four months. In that way, your trademark is exposed to the public. At this time, any person may file opposition against a trademark after its publication.

Step 8: Notice of Opposition & Response

If any third party or businessperson is against your registration, they have to file a notice of opposition. You will also be informed about it by the registrar. Now, you have to respond to the notice by attaching the supporting documents within 2 months.

Step 9: Hearing of Opposition

When the opposition continues over your reply, the registrar fixes a date for the hearing and informs both parties. During the hearing, both sides put forth their arguments. The registrar examines your counterstatement. If it is valid and convincing, your application will move to the next step in the process of registering your trademark.

Step 10: Registration and Certificate Issuance

Once the registrar approves your trademark, you will get an official Trademark Registration Certificate. The registration is valid for a period of ten years starting from the date of application. The mark is renewable every ten years upon expiry.

Conclusion

The Trademark Act 1999, is the protection shield for your brand identity and reputation. Every trademark owner has the exclusive right to use a mark. This prevents customer confusion and unauthorized use of your intellectual property. You must understand the Trademark Act to protect your business and get long-term success. If you have any kind of queries, reach out to Online Legal India.  

FAQ

Q1. What is the Trademark Act 1999?

The Trademark Act, 1999, is defined as the primary law in India. It handles the registration, protection, and enforcement of trademarks. Businesses has the right to register trademarks for goods and service mark.

Q2. Can service marks be registered under the Trademark Act?

Yes, a service mark can be registered under the Trademark Act in India

Q3. How does the Act match with international standards?

The Trademark Act, 1999 was created for the purpose of Indian trademark laws with the global standards set by the TRIPS Agreement (1994). It established various provisions can include:

a) Recognizing well-known marks

b) Enables multiclass applications

c) Extends the registration validity to 10 years, etc.

Q4. Where Can I do the Trademark Registration under the Act?

You can do the trademark registration online through the official IP India Portal. In case of offline, you can file it at the Trademark Registry offices.

Disclaimer

This article is for informational purposes only and does not constitute legal advice. Online Legal India is a digital platform. If you require legal assistance, we strongly recommend consulting a qualified lawyer or law firm.