A trademark is a distinctive sign or indicator that identifies the goods or services of a particular person or enterprise from those of others. Trademarks are valuable assets for any business as they help to create brand recognition and customer loyalty. Trademarks protect consumers from being misled or confused by inferior or counterfeit products.
History and Evolution of Trademark Law in India
Before 1940, there was no specific law on trademarks in India. The protection of trademarks was based on the common law remedy of passing off, and the registration of trademarks was governed by the Indian Registration Act 1908. However, these provisions needed to be more adequate and effective to deal with the growing problems of trademark infringement and unfair competition.
The first statutory law on trademarks was enacted in 1940 as the Trade Marks Act 1940 to overcome these difficulties. This Act was based on the United Kingdom Trade Marks Act 1938 and provided for registering and protecting trademarks in India. However, this Act soon became obsolete due to rapid trade and commerce changes and new trademarks’ emergence.
Therefore, the Trade Marks Act 1940 was replaced by the Trade and Merchandise Marks Act 1958. This Act introduced several new features, such as service marks, certification marks, collective marks, well-known marks, associated marks, etc. The Act also provided:
1-Better protection of trademarks against infringement.
2- Passing off
3- Prescribed civil and criminal remedies
Trademark Public Search in India
A trademark public search checks whether someone in India has registered or applied for a proposed/adopted trademark. A trademark general search is essential for anyone who wants to adopt or register a trademark for their goods or services, as it helps to avoid infringement and opposition issues.
Why is Trademark Public Search Important?
A trademark public search is vital for the following reasons:
1-It helps to keep the objection raised by the Registry of Trademarks under Section 11 of the Trademarks Act, 1999, at bay.
2-It helps to ascertain the availability and register-ability of a trademark in India.
3-It helps to avoid potential conflicts with existing or pending trademarks that may be identical or similar to the proposed Trademark.
4-It helps to avoid legal disputes and liabilities arising from trademark infringement or passing off.
5-It helps to save time and money by avoiding unnecessary applications and oppositions.
6-It helps to create a distinctive and unique brand identity for the goods or services.
How to Conduct Trademark Public Search in India?
A trademark public search can be conducted online or offline in India. The online method is more convenient and accessible as it can be done anywhere and anytime. The offline method involves visiting the Trademarks Registry offices or hiring an agent or attorney to search.
The online trademark public search can be done through the official website of the Indian Trademarks Registry at https://ipindiaonline.gov.in/tmrpublicsearch/. The website provides various options for searching trademarks, such as:
Word Mark: This option allows searching for trademarks by entering the word or phrase that constitutes the proposed Trademark
Class: This option allows searching for trademarks by entering the class or classes of goods or services for which the proposed Trademark is intended
Goods Description: This option allows searching for trademarks by entering the description of goods or services for which the proposed Trademark is intended
Search Type: This option allows choosing the type of search such as phonetic, fuzzy, exact, etc.
The website also provides other information, such as:
Class Details: This option provides the list of classes and their descriptions as per the Nice Classification system
Well-Known Marks: This option provides the list of famous marks that the Trademarks Registry recognizes
Prohibited Marks: This option provides the list of marks that are not permitted from registration under the Trade Marks Act, 1999
Vienna Code Classification: This option provides the classification system for figurative elements of trademarks
International Non-Proprietary Names (INN): This option provides the list of generic names for pharmaceutical substances
The website also allows downloading and printing of the search results for future reference.
The Trade and Merchandise Marks Act 1958 remained in force until 1999 when it was repealed by the Trade Marks Act 1999. The Trade Marks Act of 1999 was enacted to comply with the obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of the World Trade Organization (WTO).
The Trade Marks Act of 1999 brought about significant changes in the trademark law in India, such as:
|1.||Classification of Goods and Services, which are recognized by CGPDTM.||A trademark agent/consultancy will classify the business of the Applicant, as per the CGPDTM’S Nice list. Wherein a total number of 45 classes are mentioned. Among all the 45 classes, first 34 classes are for the manufacturers, that is from class 1-34. And the rest last 10 classes are for service providers, that is from class 35-45. The diligent the trademark agent/consultancy is while classifying the business of the applicant, the lesser the chance of receive an objection under section 9i of the Trademark Act, 1999. The same is published in the examination report of the application. However the objections can be overcome by the agent.|
|2.||Trade Mark Search, conducted on official IP, India’s website.||A diligent Trade Mark Search report is prepared by the Trademark Agent, wherein the Proposed to be Used/Adopted Mark of the applicant is searched, within the relevant CGPDTM’s class. The same are prepared by four criteria. Namely: Start With; Contains; Matches With and Phonetically. In the said Trademark Search report, all the similar/identical or phonetically similar Trademarks are jotted down and presented before the applicant. The motive behind this to keep a check whether the applicant’s application will receive an objection, under section 11ii of the Trademarks Act, 1999 or not. The same is published in the examination report of the application. However the objection can be overcome by the agent.|
|3.||Filing the Application of Trademark||The Trademark Agent will file the Trademark application, that is Form TM-A, on behalf of the applicant, before the registry of the Trademark, having appropriate jurisdiction. All the relevant documents are attached therewith, Power of Attorney, signed by the Applicant, in the favor of the Trademark Agent. In case the Mark is an Adopted Mark, then a User Affidavit, along with Exhibits, which established it on record, that the applicant has been using the mark before approaching the Registry of the Trademark. We have established it earlier, that the Headquarter of Trademark registry is at Mumbai, having it’s branches at Ahmadabad, Chennai, Delhi, Kolkata. The fees structure of the TMA is depended upon if the applicant is a single firm, or a company, or a body incorporated. For each class, one TM-A is filled. However, an applicant can upheld an TM-A before the registry of the Trademark, for multiple classes, under class 99. For each mark type, that is, Word or Device, an independent Trademark Application is filled.|
|4.||Examination Report||An examination report is issued by the Registry of Trademark, wherein the Registry either accepts and advertises the mark in the Journal Copy of the Trademark, which is published every Friday of the week. Or, the registry may raise objection if it deems fit, either under Section 9 of the Trademark Act, or under Section 11 of the Trademark Act. The registry may also raise any other objections. For instance: Either to file a fresh User Affidavit, in case of an application of Adopted Mark, if the registry deems fit that the said User Affidavit is not appropriate, it may mention all the objections pertaining to the said issue, in the examination re[port. As ultimately, the registry has the discretionary power to decide as to which document is admissible or which is not, The registry will appoint one Examiner, who will conduct all the other proceedings..|
|5.||Reply to Examination Report||In the event of receiving an objection by the Registry of the Trademark, the Registry of the Trademark grants an opportunity to the applicant, under Trade Mark Rules 33(5) to file a reply to the examination report within thirty days of the issuance of the Examination Report. Wherein the agent will prepare a reply to examination report, stating the facts, preparing the matter, in order to waive off the objection raised by the registry. Additional documents/supportive documents are also annexed with the reply to examination report, as Exhibits for the reference of the registry. The said Reply to examination is submitted/uploaded before the registry of the Trademark. In the events, where the Registry of the Trademark is not satisfied with the reply of the examination, the applicant, through it’s Trademark agent can schedule a Show Cause Hearing, in order to resolve the objections raised by the Registry in the Trademark in the Examination Report.|
|6.||Show Cause Document||A Show Cause Document is prepared by the Trademark Agent, on the behalf of the applicant. Wherein, the applicant will prepare arguments/matter/facts in order to satisfy the registry that the Mark applied by the Applicant is eligible to be registered as a Trademark. The document will include all the additional/supportive documents, in order to back up the submissions of the trademark agent.|
|7.||Show Cause Hearing||The trademark Agent, along with the said Show Cause Document will appear before the Trademark Registry, on the day the said hearing is scheduled for by the Registry of Trademark. Wherein the agent will orally present the submissions made in the Show Cause Document. However, the Registry of the Trademark hold the discretionary power, and the same can either dismiss the submissions, presented by the trademark or re-schedule a fresh Show Cause Hearing.|
|8||Accepted and Advertised||In the events, where the Registry of Trademark is satisfied by the submissions presented by the Applicant, through its agent, it may accept and advertise the said mark in Journey Book, which is published every Friday, upon the official website of IP, India. In the events of accepting and advertising, the registry is opening the window of the general public, and those who have registered Trademark, within the relevant class, to oppose the registration of the applicant’s mark. The said is only admissible, if the registration of the applicant’s mark will create a confusion among general public. Any person who is using the identical/similar mark in the open market, can approach the Registry, and file an opposition against the registration of the mark.|
|9||Notice of Opposition||In the events of receiving an Opposition, under Form TM-O, the Registry will serve a notice to the Applicant. The Applicant through it’s agent will prepare a counter statement.|
|Counter Statement for Opposition||Upon receiving a Notice of Opposition, the registry will direct the applicant, to prepare a counter statement, wherein the the applicant is liable to establish it on record that the impugned mark of the applicant is bona-fide and is eligible to be registered as a Trademark. The applicant, through it’ agent will prepare the counter statement within 60 days from the Notice received by the registry, an additional 30 days of extension is granted by the registry to file the same.|
|Evidences under Section 137.||Evidences, in order to support the counter statement are presented separately by the applicant through it’s agent. Wherein, all the invoices/flyer/other supportive documents are produced by the applicant, through their agent.|
|Show Cause Hearing||An additional Show Cause hearing is scheduled by the applicant, in order to resolve the issue of the Opposition. Wherein, the examiner, having appropriate power granted to it, will exercise the same, and decide as to whether the applicant’s mark is liable to be opposed and/or refused, or not.|
|Registration||Once the Examiner is of the opinion, that the applicant’s mark have passed all the check post of objections raised by the Registry of Trade Mark, and either received no opposition by third party, or in the events of receiving opposition by the third party, have successfully satisfied the Registry that the the Impugned mark is eligible to be registered, the Registry will issue one Trade Marks Certificate to the applicant, and label the Applicant’s Application Number as Registered.|
What are the Benefits of Trademark Public Search in India?
A trademark public search in India has several benefits, such as:
1-It helps to identify and avoid existing or pending trademarks that may be similar or identical to the proposed Trademark.
2-It helps assess the success chances of registering a trademark in India.
3-It helps to plan and strategize the trademark application process
4-It helps to protect and enforce trademark rights in India
5-What are the Limitations of Trademark Public Search in India?
A trademark public search in India has some limitations, such as:
1-It may need to be updated with the latest status of trademarks as there may be a time lag between filing and publication of applications.
2-It may not include all types of trademarks, such as unregistered, common law, well-known, etc.
3-It may only provide comprehensive information on some aspects of trademarks, such as validity, ownership, use, etc.
4-It may not guarantee the registration or non-infringement of a trademark as other factors may be involved, such as oppositions, objections, etc.
Therefore, a trademark public search in India should be done with caution and due diligence. It should not be relied upon as a substitute for professional or legal advice. It should be followed by a thorough analysis and evaluation of the search results by an expert or attorney.