Trademark Registration in Coimbatore – Contents of Trademark Applications is what we are going to discussed in this article.

Representation of the mark (Rule 26)

applications

  • Every Applications for the registration of a trademark, and where additional copies of the applications are required., every such copy, shall contain a clear and legible representation of the trademark of size not exceeding 8 cm x 8 cm.
  • Where an application contains a statement to the effect that the applicant wishes to claim combination of colors as a distinctive feature of the trademark, the application shall be accompanied with reproduction of the trademark in that combination of colors.
  • Where the applications contain the statement to the effect that the trademark is a three dimensional trademark, the reproduction of the trademark shall consist of a two dimensional graphic or photographic reproduction as follows, namely,
    1. The Replication applied shall consist of three different view of the trademark;
    2. Where, the Registrar provides that the replication of the trademark given by the applicant does not sufficiently show the three dimensional trademark, he may call upon the applicant to provide within two months , up to five further different views of the trademark and a description by words of the trademark;
  • Where the Registrar considers the different views or description of the trademark referred to in clause (2), still do not specifically show the particulars of the three dimensional trademark, he may call upon the applicant to provide a specimen of the trademark.
  • Where an application for the registration of a trademark consists of shape of goods or its packaging, the reproduction furnished shall consist of at least five different views of the trademark and a description by word of the trademark.
  • If the Registrar considers the different views or description of the trademark referred to in clause (1) do not sufficiently show the particulars of the shape of the goods or its packaging, he may call upon the applicant to furnish a specimen of the goods or packaging as the case may be.
  • Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding 30 seconds length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.
  • If the Registrar is not satisfied with any representation of a trademark, he may at any time require another representation satisfactory to him to be substituted before proceedings with the application.

Representation of the mark in the space (8 X 8 cm) provided on the application form for the purpose. In no case, the size of such representations shall exceed 33 X 20 cms. Representations of a larger size may be folder and mounted upon linan or suitable material and affixed thereto.

Transliteration and translation

The applications shall be either in English or in the official language, namely Hindi. When any document, including the mark forming part of the application is other than in Hindi/English, it is required to be accompanied by an English translation. If the mark consists of any word or words in a language other than what is prescribed, transliteration and translation of each such word starting the language to which it belongs to be indicated.

Applications under the convention Arrangement (Rule 24)

applications

The applications may contain a declaration claiming priority (as per Paris convention) under section 154 of the Act. A certificate by the Registrar or competent authority of the Trademark office in that Convention country shall be submitted with applications for registration which shall include particulars of:

  • The trademark
  • Statement indicating the filing date in the convention country/countries.
  • Name of the Convention country where filed, serial number, if any, and a statement indicating that a priority is claimed. Where the applicant files more priority claims that one under section 154 in respect of the same of trademark, the Registrar will take the date of the earlier application in the convention country, goods and services not covered in the Convention application. Further, only a single priority date shall be claimed in respect of all the goods and services not covered in the convention application. Further, only a single priority date shall be claimed in respect of all the goods and services mentioned in the application for registration of trademark.
  • The Registrar may call for any other relevant particulars in the case of such applications.

Unless such certificate has been filed at the time of filing of the applications for registration in India, there shall be filed, within two months of the filing of such applications certifying or verifying to the satisfaction of the Registrar, the date of filing of the applications, the country or countries, for representation of the trademark, and the goods or services covered by the applications. The Registrar may require the applicant to furnish a copy of the earlier application on the basis of which priority is claimed, duly certified as correct by the Registry with which it was filed. To qualify for obtaining a claim of priority date based on an earlier applications under the International convention, the application for trademark registration in India shall be filed within 6 months of the earlier applications.

Other details

applications

  • Name of the applicant – Names of natural persons shall be indicated by the person’s family name and given name, the family name being indicated before the given name. If a body corporate, the corporate name and country of incorporation to be given. In case of the partnership, the names and nationality of all partners, the trading style and status (whether registered or not) to be given. In the case of a trust, the name of the Managing Trustee is to be given. It is to be noted that in the case of an unregistered firm, section 69 of the Partnership Act, which provides that “effect of non-registration” will apply.
  • Nationality of an applicant – In the case of a natural person, it is to be represented by the name of the State/country of which the person is a national. The legal entities will have to indicate the state/country of which the person is a national. The legal entities will have to indicate the state/country under whose laws they are constituted and their registered office.
  • Full address of the applicant and if there is more than one address, the fact is to be given indicating the address of the principle place of business. The address should include the pin code, country code indicating the telegraphic, telex address and facsimile and telephone numbers. The address indication shall be in such a way to satisfy customary requirement for prompt postal delivery.
  • Signature – The applications or other documents shall be signed by the applicant or his agent.
  • In case of a partnership, it may be signed by all partners or any partner authorized to sign. In the case of a body corporate by a Director or the Secretary or other principal officer together with the seal of the body corporate.
  • Power of attorney –the appointment of the agent is to be by power of attorney executed in the prescribed form TM-M signed by the applicant or where there are more than one applicant, by each applicant. The Power of attorney may be filed along with the applications or within two months from the date of filing of the applications may be deemed not to been taken.
  • Address for service – In all cases where the applicant has a place of business or residence in India, it is mandatory to give an address for service India where all communications from the Registrar will send.
  • Filing date – Though the applications for registration of a mark is required to be filed on the prescribed form, as per the article 5 of the Trademarks Law Treaty, 1994, the Registrar may accord a filing date, corresponding to the date on which the following elements are received-
    1. Name of the applicant
    2. Address to which communication can be directed
    3. Copy of the mark
    4. Name of goods are/or services for which the registration is sought.
    5. Prescribed applications fee

According of a filing date on the basis of receipt of particulars as indicated above would appear to be just an interim facility to the applicants, pending compliance with the filing of an application in the prescribed form and furnishing other details in due course. On receipt of the applications in the prescribed manner, the registrar will acknowledge the receipt of the application, by giving a system generated electronic receipt or sending such receipt to the email address provided for the purpose (Rule 32).

User of the trademark

application

Rule 25 provides that the applications to register a trademark shall, unless the trademark is proposed to be used, contain a statement of a period during which the mark has been used. The Registrar may also require the applicant to file an affidavit testifying to such use, with exhibits showing the mark as used. It is obvious that the intention of law is that the mark must be used in the manner registered or proposed to be registered or proposed to be registered. Normal and fair use should not be stretched to the point where it would determine the principle that anyone inspecting the register should be able to determine the protection should are obtained. If an affidavit use or proposed use is not within the normal boundaries of normal and fair use, he may leave himself open to the charge that the mark proposed for registration was not in good faith.

Single applications to cover multi-classes

For purposes of registration of trademarks, goods are grouped and classified into classes 1 to 34 and similarly services are grouped or classified into classes 35 to 42, in accordance with the International Classification system developed and published by the World Intellectual Property Organization. Under the repealed Act of 1958, separate applications were required to be made, if the applicants desired to register the same trademark in more than one class. The present law has made an important change in this respect. Sub-Section (2) of section 18 now permits filing of a single applications for registration of the same trademark covering goods /services falling in more than one class, resulting in one and the same trademark registration as per the Article 6 of the Trademarks Law Treaty, 1994.

Specification of goods or services

applications

While the law provides the facility to file a single applications covering goods/services in more than one class, the procedural rule requires that the names of goods or services stated in the applications shall, as far as may be, correspond to those given in the classification of goods and services published by the registrar under sub-rule 2 of the rule 20. Pending such publication, the provision in rule 20(1) shall be followed. Section 18(2) mandates that though a single application may be made for registration of  a trademark for different class of goods and services, the fee payable therefor shall be in respect of each class of goods or services. In this connection, Rule 23(6) provides that “ Where an application files for single application and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant shall restrict the specification of goods or services to the class or classes by filing an application on Form TM-M and by payment of the appropriate fee: Provided that in case all the goods or services fall in a class specified, the registrar may permit the correction of class by filing the request on Form TM-M”. it is a settled practice in the Registry not to permit any amendment of the specification, which will have the effect of widening the specification. Accordingly, if the particular goods/services are not included within the classes listed by the applicant, he will not be allowed to include such additional goods/service or add any additional classes, on the basis that those goods/services also fall in other classes.

Jurisdiction for filing application

applications

This sub-section states as to where the application is to be filed. To facilitate registration of trademarks, the Central Government has established offices currently at Ahmadabad, Calcutta, Chennai, Delhi and Mumbai, the head office being at Mumbai. Each office exercises functions within defined jurisdiction as notified by the Central Government. The Trademarks Registry has its Head office at Mumbai and Branch offices at Calcutta, Delhi, Madras and Ahmadabad having territorial jurisdiction on a Zonal Basis. Therefore, a trademark application is to be filed in the office of the Trademarks Registry, within those territorial limits the principal place of business in India of the applicant, whose name is first mentioned as having a place of business, is situated. Where the applicant does not carry on business  in India, the place mentioned in the address for service in India, will determine the jurisdiction where the applications is to be filed. For Example, if an application is to be filed on behalf of a German company, by an agent having his office at Calcutta, the applications will be filed at Calcutta.  So, there is no other alteration in the principal place of business in India or in the address for service in India, shall affect the jurisdiction of the appropriate office.

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