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Trademark Application Filing Law India

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Posted by : Trustman on | Jun 17,2015

Applications for registration of trade marks are to be filed in the prescribed manner, either in paper form or in an electronic form. Pursuant to sub-section (3) of section 6 which enables the maintenance of Register of Trade Marks wholly or partly on computer, the Register of Trade Marks is now being maintained only on computer in an electronic format. The detailed procedure for filing of trade mark applications is explained herein below:
 
Section 18(1) enacts that – “any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.”
 
The provisions contained in rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002 prescribe the procedure in this behalf. These are as follows:
 

Rule 25. Form and signing of application:-


(1) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent.

(2) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class shall be made in Form TM-1.

(3) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2.

(4) A single application for the registration of a trade mark for different classes of goods or services from convention country under sub-section (2) of section 154 shall be made in Form TM-52.
 
(5) An application to register a textile trade mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 shall be made in Form TM-22.

(6) An application to register of a textile trade mark other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 from a convention country under sub-section (2) of section 154 shall be made in form TM-45.

(7) (a) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class shall be made in Form TM-3.
 
(b) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class from a convention country under subsection (2) of section 154 shall be made in Form Tm-64.

(8) (a) An application under section 71 to register a certification trade mark for a specification of goods or services included in any one class shall be made in form TM-4.

(b) An application under section 71 to register a certification trade mark for a specification of goods or services in any one class from a convention country under subsection (2) of section 154 shall be made in Form TM-65.

(9) A single application for the registration of a trade mark for different classes of goods or services shall be made in Form TM-51.

(10) An application to register a series trade marks under section 15 for a specification of goods or services included in a class or for different classes shall be made in form TM-8.
 
(11) An application to register a series trade mark under section 15 for a specification of goods or services included in a class or different classes from a convention country under sub-section (2) of section 154 shall be made in Form TM-37.

(12) An application for the registration of a trade mark for goods or services shall -

(a) explain with sufficient precision, a description by words, of the trade mark if necessary, to determine the right of the application;
(b) be able to depict the graphical representation of the trade mark;
( c) be considered as a three dimensional trade mark only if the application contains a statement to that effect;
(d)be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect;

(13) An amendment to divide an application under proviso to section 22 shall be made in Form TM-53.

(14) An application, not being a series trade mark shall be in respect of one trade mark only for as many class or classes of goods or services as may be made.

(15) In the case of an application for registration in respect of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.

(16) The specification of goods or services shall not ordinarily exceed five hundred characters for each class. An excess space fee as prescribed in the First Schedule is payable with each application in Form TM-61.

(17) A single application for the registration of a collective mark –
(a) in different classes shall be made in Form TM-66; (b) in different classes from a convention country shall be made in Form TM-67.

(18) A single application for the registration of certification trade mark –
(a) in different classes shall be made in form TM-68; (b) in different classes from a convention country shall be made in Form TM-69.

(19) Where an applicant files a single application for more classes than one and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods or services to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of the original filing date or in the case of an application from a convention country the convention application date under sub-section (1) of section 154 provided the claim was otherwise properly asserted in the initial application.
 
Rule 26. Application under convention arrangement: –

(1) Where a right to priority is claimed by reason of an application for registration of a trade mark duly filed in a convention country under section 154, a certificate by the Registry or competent authority of that trade marks office shall be included in an application for registration under sub-rule (3), (4), (6), (7)(b), 8(b), (11), (17(b) or (18)(b) of rule 25, as the case may be, and it shall include the particulars of the mark, the country or countries and the date or dates of filing of application and such other relevant particulars as may be required by the Registrar.

(2) Unless such certificate has been filed at the time of the filing of the application for registration, there shall be filed, within two months of the filing of such application certifying or verifying to the satisfaction of the Registrar, the date of the filing of the application, the country or countries, the representation of the mark, and the goods or services covered by the application.

(3) The application shall include a statement indicating the filing date of the filing in the convention application, the name of the convention country where it was file, the serial number, if any, and a statement indicating that priority is claimed: Provided that where the applicant files more priority claims than one under section 154 for some or all the goods or services in respect of the same trade mark, the Registrar shall also take the date of the earlier application in a convention country, as the priority date: Provided further that such priority date shall only be in respect of all or some of the goods or services referred to in the earlier convention application.

(4) Where a single application under sub-section (2) of section 18 is filed from a convention country for one or more classes of goods or services, the applicants shall establish a sufficient ground to the satisfaction of the Registrar for the date of filing of application in all such classes.
 
Rule 27. Statement of user in applications: An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
 
Rule 28. Representation of mark: Every application for the registration of a trade mark, and where additional copies of the application are required every such copy, shall contain a representation of the mark in the space (8 cm x 8 cm) provided on the application form for that purpose: Provided that in any case the size representation shall not exceed 33 centimeters by 20 centimeters with a margin of 4 centimeters on the left land side.
 
Rule 29. Additional representation : 

(1) Every application for registration of a trade mark shall, except as hereinafter provided, be made in triplicate and shall be accompanied by five additional representations o the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class or classes of goods or services for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, if any, and such other particulars as may from time to time be required by the Registrar and shall be signed by the applicant or his agent.

(2) Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as the distinctive feature of the mark, the application shall be accompanied with one reproduction of the mark in black and white and four reproduction of the mark in colour.

(3) Where the application contains a statement to the effect that the trade mark is a three dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or photographic reproduction as follows, namely:-

(i) The reproduction furnished shall consist of three different view of the trade mark;
(ii) Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish within two months upto five further different view of the mark and a description by words of the mark;
(iii) Where the Registrar considers the different view and/or description of the mark referred to in clause (ii) still do not sufficiently show the particulars of the three dimensional mark, he may call upon the applicant to furnish a specimen of the trade mark.
(iv) (a) Where an application for the registration of a trade mark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trade mark and a description by word of the mark.
(b) If the Register considers the different view and description o the mark in sub clause (i) still does not sufficiently show the particulars of the shape of goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging as the case may be.
 
Rule 30. Representation to be durable and satisfactory:

(1) All representations of trade marks shall be of a durable nature, and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approximately 33 centimeters by 20 centimeters, leaving a margin of not less than 4 centimeters on the left hand part of the sheet.

(2) If the Registrar is not satisfied with any representation of a mark he may at any time require another representation satisfactory to him to be substituted before proceedings with the application.

(3) Where representation of a trade mark cannot be given in the manner set forth here in above, a specimen or copy of the trade mark may be sent either in full size or on a reduced scale and in such form as the Registrar may think most convenient.
 
Rule 31. Series trade marks:

(1) Where an application is made for the registration of series trade marks under sub-section (3) of section 15, copies of representation of each trade mark of the series shall accompany the application in the manner set forth in rules 28 and 29.

(2) An applicant claiming to be the proprietor of a series trade mark under subsection (3) of section 15 may apply to the Registrar in Form TM-8 or TM-37, as the case may be, for its registration as a series for one registration and there shall be included in each such application a representation of the trade marks in a class or in each class claimed to be in the series. The Registrar shall, if satisfied that the marks constitutes a series proceed further with the applications.

(3) At any time before the publication of the application in the journal, the applicant applying under sub-rule (2) may request in Form TM-53 for the division of the application into separate application or applications, as the case may be, in respect of one or more marks in that series and the Registrar shall, if he is satisfied with the division requested conforms with sub-section (3) of section 15, divide the application or applications accordingly.

(4) The division of an application into one or more applications under sub-rule (3) shall be on the payment of a divisional fee and such class fees as are appropriate.
 
Rule 33. Transliteration and translation:

Where a trade mark contains a word or words in scripts other than Hindi or English, there shall be endorsed on the application form and the additional representation thereof, a sufficient transliteration and translation to the satisfaction of the Registrar of each such word in English or in Hindi and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent.
 
Rule 34. Names and representations of living persons or persons recently dead. Where the name or representation of any person appears on a trade mark the applicant shall, if the Registrar so requires, furnish him with the consent in writing of such person in case he is living or, in case his death took place within twenty years prior to the date of the application for registration of the trade mark, of his legal representative, as the case may be, to the use of the name or representation and in default of such consent the Registrar may refuse to proceed with the application for registration of the trade mark.
 
Rule 35. Name or description of goods or services on a trade mark.

(1) Where the name or description of any goods or services appears on a trade mark, the Registrar may refuse to register such mark in respect of any goods or services other than the goods or services so named or described.

(2) Where the name or description of any goods or services appear on a trade mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods or services on the applicant giving an undertaking that the name or description will be varied when the trade mark is used upon goods or services covered by the specification other than the named or described goods or services. The undertaking so given shall be included in the advertisement of the application in the Journal under Section 20.
 
Rule 36. Deficiencies:

Subject to sub-rule (2) of rule 11, where an application for registration of a trade mark does not satisfy the requirement of any of the provisions of the Act or Rules, the Registrar shall send notice thereof to the applicant to remedy the deficiencies and if within one month o the date of the notice the applicant fails to remedy any deficiency so notified to him the application may be treated as abandoned.
 
The application should be made in the prescribed form and manner (in triplicate), accompanied by the prescribed fees and filed at the ‘appropriate office’.

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