A draft ofManual of Trade Marks
Practice & ProcedurePractice & Procedureभारत सरकार
वाणिज्य और उद्योग मंत्रालय
कार्ाालर् महानिर्ंत्रक एकस्व अभिकल्प एवं व्र्ापार चिन्ह

बौद्धिक संपदा भवन, एस .एम.रोड, एन्टॉप हिल, मंबई 700004

Government of India
Ministry of Commerce &Industries
Office of Controller General Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan, S.M. Road, Antop Hill, Mumbai-400037

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Patents/Designs/Trademark
Geographical Indications

General Objective of the Trade Marks Manual
The draft Manual of Trade Marks Practice and Procedure is being published to bring uniformity
and consistency of practice with respect to the various procedures involved in theadministration of the Trade Marks Act and it is hoped that the manual will be useful for theofficers of the Trade Marks Registry and the users of the system. Indeed, section 98 of theTrade Marks Act gives statutory recognition to “practice of the Trade Marks Registry” as animportant aspect in determination of legal proceedings on appeal before the Appellate Board.
For greater understanding and transparency, the manual attempts to explain the practice andprocedure of the Trade Marks Registry by categorizing the issues outlined in three parts:
underlying concepts, the requirements from the stakeholder and the office action involved as
per the provisions of Trade Marks, 1999 and rules made thereunder.
The manual is in the nature of a guide for the users and, if any of the statements in thisdocument are at variance or inconsistent with the provisions of the Act or the Rules, the lattershall prevail. Wherever appropriate, reference to case laws representing decisions of Courts in
India have been made to facilitate better understanding of the law. The Manual will be finalised
after receipt of comments of the stakeholders on this draft and careful consideration of thesame. It is expected that the manual will be updated from time to time in the light of important
judgments and decisions of courts involving interpretation of the provisions of the Act andRules.

(Chaitanya Prasad)
Controller General of Patent Design & Trademarks
10th March 2015

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Index of Contents
Chapter I: Filing of a Documents in Trade Mark Registry
Section A: General Filing Requirement
1. How a document/s can be filed
2. Filing of documents 2.1. Requirements as to form
2.2. Requirements as to content
3. When last Date of Filing is a Public Holiday
4. Documents must be signed and dated
4.1. Who can sign?
4.2. Applicant should supply an address for service
4.3. Fee
5. Non-compliance of filing requirements
6. Filing process

Section B: Filing of Trade Mark Application (Additional Requirements)
1. Filing of Trade Mark Application
1.1. Who can file a Trade Mark Application?
1.2. Meaning of “Registered proprietor”
1.3. Identification of Proprietor before applying for a trademarks
2. Details Required from the Applicant
2.1. In case of Individual
2.2. In case of Joint owners
2.3. In case of Partnership Firm
2.4. In case of Companies
2.5. In case of Companies Government Departments
2.6. In case of Companies Quasi-Governmental undertakings
2.7. If applied as Conventional application –2.8. Statement of Use:
2.9. Clear Specification of goods / Servicers:
3. Form of the Application:
4. Information required in the Application Form
4.1. Basis Information
4.2. Representation of Trademarks
4.3. Requirement of graphical representation
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4.4. Size of The Trademarks
4.5. Specification of Representation
4.6. In case of series Trademarks:
4.7. In case of Shape trademarks
4.8. In case of trademarks: as Combination of Colours
5. A representation that includes words in a language other than English/Hindi and/or charactersother than Roman /Devnagari characters.
6. Specification of the goods and/or services for which registration is sought
6.1. Specification required as per Rule 103
6.2. Limitations on the specification.
6.3. Problems with a specification
7. Signature and Date
8. Fees:
9. Consequences of non-compliance of filing requirements
10. Data Entry
11. VIENNA Codification

Chapter II: Examination of Applications filed for Registration of Trademarks
Introduction and Scope
1. Identification of Nature of Application
2. Ensuring the appropriate name of the Applicant:
3. Ensuring the submission of the Power of Attorney
4. Ensuring about the applicant’s principal place of business
5. Ensuring transliteration and translation of trademark in non-English or non-Hindi characters.
6. Ensuring the consent of a person or his legal representative, if the trademark contains a name or
representation of that person
7. Ensuring submission of draft regulations in case of an application for registration of a collective
mark
8. Ensuring submission of draft regulations in case of an application for registration of acertification mark9. Ensuring submission of adequate priority documents, in case of applications with priority claims
10. Examination of application as to classification of goods and services
11. Examination of application as to relative grounds for refusal of registration
12. Examination of application as to absolute grounds for refusal of application for registration
13. Draft for communication of objections to acceptance of application for registration, which are
liable to be refused on absolute grounds
14. Examination of series marks
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15. Proposing appropriate condition of acceptance of the application or limitation of use of the
trademark16. Communication of Examination report to the applicant

Chapter III: Post Examination Disposal of Applications Filed For Registration ofTrademarks
Introduction and Scope
1. Consideration of applicant’s reply to examination report
2. Treating the application as abandoned, if no reply to examination report is received
3. Show Cause Hearing
4. Publication of applications in the trademarks journal
5. Withdrawal of acceptance
6. Registration of trademarks

Chapter IV: Chapter IV Tribunal Section (Opposition & Rectification Proceedings)

Section A: Opposition
1. How a opposition proceeding can be started
2. Formality Requirements
3. Mode of Evidences
4. Fixation of Hearing after completion of Evidences by both the parties

Section B: Rectification
1. Who may apply for Rectification of a registered Trade Marks

Section C: Review of a Decision
1. Review of a decision

Chapter V: Pre-Registration Amendment
1. Correction of errors or amendment in an application
2. Division of Application

Chapter VI: Renewal, Assignment/Transmission, Registered User and Post
Registration Changes of Registered User
1. Renewal of Trademark(s):2. Assignment & transmission of a registered trademarks
3. Registered users:
4. Post-registration amendments:
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Chapter I:
Filing of a Document in Trade Marks RegistryThis chapter deals with filing of a document/new application in the Trade Mark Registry forregistration of a Trademark or in relation to an earlier application for registration of a
trademark.

This chapter is divided in to two parts i.e. Section A and Section B. Section A deals withgeneral filing requirements for any document in trademarks registry and Section B deals withspecific additional requirements related to trademark applications (TM 1, TM 2, TM 51, etc.).

Section A: General Filing Requirements
This section of the chapter covers the general requirements for filing any application, notice orrequest under the Trade Marks Act 1999 (hereinafter referred to as “the Act”) or Trade Marks
Rules 2002 (hereinafter referred to as “the Rules”).
Sr.
No.

General Description

1

Relevant
provision of
the Act &Rules

How a document/s can be filed
GeneralRequirement

A document can be filed by a person or his duly Section 18,
authorized agent at the appropriate office of the Rules 4, 8 &Trade Marks Registry as defined in Rule 4 of the 15
Trade Marks Rules 2002, which includes the Head
office (at Mumbai) or branch offices (atAhmedabad, Chennai, Delhi, Kolkata) of theRegistry. However, certain documents as specified
under Rule 8(2) may either be filed at the Head
office of the Trade Marks Registry or at theappropriate office while some documents as
specified under Rule 8(2) (c) may only be filed at
the Head office of the Trade Marks Registry (unlessthe Registrar directs otherwise).
Appropriate office of the Trade Marks Registry forthe purpose of filing a document is the office within
the territorial jurisdiction of which the principal
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place of business of the applicant in India issituated. Detailed provisions about the appropriate
office for various categories of applicants areprovided in Rule 4.
The document may be filed by delivery at the front
office personally or by sending by post, or
submitting electronically through the gateway
provided in the official website i.e. ipindia.nic.in.
All offices of the Trade Marks Registry are open
for receipt of fee bearing documents from 10 am to3.30 pm, on all working days. Non fee bearing
documents can be filed at any time during officeworking hours.
Electronic filing of documents can be done at all
hours (24x7).
2
2.1

Filing of documents Requirementfrom theapplicantRules 8,Requirements as to form
The requirements in respect of documents as 13,14 and 15
specified in the Rules are set out below:
 Documents must be in English or Hindi
 Documents must be neatly handwritten or
typewritten or printed upon strong paper ofgood quality and of size of approximately 33 cm
X 20 cm. and shall have on the left hand part
thereof a margin of not less than 4 cm.
 Contents of the documents must be on one sideof the paper in a deep permanent ink.
 The contents of the documents must be in large
and legible characters.
 The signature of the persons signing a document
and the date of signature must be placed
immediately at the end of the document.
 The name of the person signing a document
must be legibly written in English or Hindi incapital letters beside the signature of that
person.
 An alteration made in a document before it isfiled at the Trade Marks Registry should beinitialed in the margin by the person signing the
document.
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2.2

Requirementfrom theapplicantRequirements as to content
Applications, notices and some requests filed at theTrade Marks Registry are required to be in aprescribed form.
The application, notice or request should generally
include the following details, depending upon thenature of the document:

Trade mark number(s) in relation to which
certain action is to be taken;Name and address for service of person(s)making the application, notice or request (if theapplication, notice or request is made by the
proprietor of the trade mark, the proprietor's
address is also generally required);Name of the proprietor of the trade mark if the
proprietor is not the person making theapplication, notice or request;

Details and grounds of the action that is to be
performed; and

Any other information or documentation that berelevant to enable action to be taken;

The appropriate class or classes, in relation towhich the application is filed

Proprietor code or agent code if allotted,



Signature(s) of person(s) or on behalf of theperson(s) making application, notice or request
and the name of signatory.



Date and place of filing
Note:
In case of online filing of the document, digital
signature will be considered as signing of the
document. Details about e-filing are given at ---3

Concept

When last date of filing is a public holiday
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If a document is due to be filed on a date that is aweekend or a public holiday, the due date becomesthe next day on which the Registry is open except
when the document is filed online.
4
4.1

Documents must be signed and dated
Concept

Who can sign?
An application, notice or request must be signed byor on behalf of the person making the application.

Section 145,
Rule 14

If the application, notice or request is made by morethan one person (as defined in section B of Chapter 1)
and it is not signed by an agent on behalf of all the
persons, the document must be signed by each person
in whose name the application, notice or request is
made.
A legal practitioner or a registered trade mark agent ora person in the sole and regular employment of theprincipal can sign on behalf of a person making anapplication, notice or request.
A document on behalf of a partnership firm shall besigned by at least one partner stating that he issigning on behalf of the firm.
A document on behalf of a body corporate shall besigned by a director or by the secretary or otherprincipal officer of the body corporate and thecapacity of the individual signing the document
shall be stated below his signature.
4.2

Applicant should supply an address for service

4.2.1 Requirementfrom theapplicantA person making an application, notice or request or Section 143
the proprietor of a trade mark, or a person whose Rules 18 andclaim to an interest or right in a trade mark is 19
recorded in the Register and who has no principal
place of business in India, must supply an addressfor service in India.
Indian applicants may also mention address forservice in India.
Note:
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While filing a document, the applicant/agent should
provide email address for electronic communicationfrom the Registry.
4.2.2 Requirementfrom theapplicant4.2.3 Requirementfrom theapplicantAn address for service to which documents from the Section 18
Trade Marks Registry (or other parties) are served (3)or given must be an address in India.
An address for service of a person who has filed an Rule 18 & 19
application, notice or request is the address forservice stated in the application, notice or request,
unless the person notifies the Registrar of anotheraddress.
An address for service in India should be provided
by every applicant or by joint applicants or by the
proprietor of a trade mark, who has principal place ofbusiness in India at the date of making theapplication for registration but has subsequently
ceased to have such place.

4.2.4 Requirementfrom theapplicant4.2.5 Office
ActionA change in an address for service must be notified in Section 8(4),writing to the Registrar, by way of request on form 22, 58, Rules
TM-16 or TM-50 along with prescribed fee.
41, 91, 96, 97
Any document that must be served on, or given or Sec. 143
sent to a person by the Registry may be left at or sent Rule 15
by post to the address for service of the person.
Where there are multiple applicants or multiple
persons making a single notice or request, and morethan one address for service is given, thecorrespondence should only be sent to first
addressee.
Fees

4.3
Requirementfrom theapplicantAll applications, notices and requests should be Rule 11(5) &accompanied by the fees as prescribed in First 25(19)Schedule of the Trade Marks Rules 2002.
Fees can be paid in cash or by a bank draft or acheque drawn on a scheduled bank at the place
where the appropriate office of the Trade Marks
Registry is situated. Bank drafts and cheques shouldbe crossed.
Online payment may be made through payment
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gateway provided in the official website i.e.
ipindia.nic.in.
5

Non-compliance of filing requirements
If a document received for filing at the Trade Marks Section 150
Registry fails to comply with the Act or the Rules Rule 11(2) &regarding the filing of documents:
11(5)In case of fee bearing documents wherein appropriate
fee has not been paid, the concerned document shallbe deemed not to have been filed. The document shallbe deemed to have been filed only when theappropriate fee is received.
Dishonor and non realization of a cheque shall betreated as appropriate fee not having been paid.
Non realization of Demand Draft for any technicalreasons shall also be treated as appropriate fee nothaving been paid.
In case of non fee bearing documents, thedocuments will not be accepted if it is unsigned ordoes not contain the referred application /opposition/ rectification / RU/CC number.

6

Filing process

6.1

OfficeAction6.2

OfficeAction6.3

OfficeAction6.4

Every document shall be received through the
FRONT OFFICE module of the Trade Marks System(TMS).
All documents addressed to the Registrar of Trade
Marks shall be received by the office superintendent
or in his/her absence, by the Assistant/clerk of thesection.
The superintendent of the R&E section shall open the
document on receipt through post. Fee bearing
document shall be sent to cash counter and the same
will generate fee receipt through system.
Acknowledgment shall be generated in case of non
fee bearing documents.
The front office shall affix a stamp (with the signatureof the official concerned) on all the documents
received. The stamp should include the date on
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if any, and indication of the office of the Registry atwhich the document is filed. The document so filed
shall
be
given
systemgenerated
receipts/acknowledgments which contains, asapplicable, the name of the office, the receipt
number, date and time, details of the person filingthe document, TM forms filed, reference number,the person on whose behalf the document is filed,amount of fees paid and the mode of payment.
6.5

OfficeActionThe data entry shall be made in the EDP module. The
device marks shall be separately scanned in original
colours and shall be uploaded in the system.

6.6

OfficeActionR&E section shall digitalize all incoming
papers/documents and upload the same in the systemthrough the appropriate module viz. Application,
Opposition, Post Registration, RU, and Copyrights.
Correspondence shall be transferred to theappropriate section.

6.7

OfficeActionIn Post Registration requests where multiple marks
are involved in a single request, scanned copies of
documents shall be uploaded against every registeredtrademarks covered in the request.

Section B: Filing of Trade Mark Application
This section deals with the provisions for filing of a trade mark application which aresupplemental or additional to the general filing requirements as given in section A of Chapter I.
An applicant making an application for registration of a trademark shall, in any case, have tocomply with the general filing requirements.
In Addition to the above it also gives glimpse of formality requirement in relation to theacceptability of a trademark application to move towards examination.
As part of the examination of an application for registration of a trademark u/s 18 (4) and 18(5), the Registrar must determine as to whether the application has been made in accordancewith the Trade Mark Act 1999 (here in after the Act) and / or Trade Marks Rules 2002 (here inafter the Rules) or not.
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Sr.
No.

General Description

1

Filing of Trade Mark Application

1.1

Concept

Who can file a Trade Mark Application

Relevant
provision of the
Act & Rules

Sec. 18 (1)A person who claims to be the proprietor of the trade
mark in relation to goods and /or services may apply
for the registration of a Trade Mark.

1.2

Concept

1.3

Concept

1.4

Concept

For the purpose of making an application ofTrademarks, "Person" includes:
A Natural Person,
A Body Incorporate,
A Partnership Firm,
HUF, Association of Persons (in case of collective
Trademarks), Joint Proprietor
A Trust,A Society, or
A Government Authority/Undertaking
Section 24
Jointly owned trademark:When two or more persons who use a trademark
independently or propose so to use it, as joint
proprietors, they may apply for registration of a
trade mark as joint proprietors.
The circumstances under which two or more persons
may apply for registration of a trade mark are set out
in Section 24 (2) of the Act.
The Trade Mark being applied for registration may Section 18(1)be: already in use or proposed to be used or intended to be usedor
 intended to be assigned to a company that isabout to be formed and registered underCompanies Act 1956 with a view to use
thereof in relation to those goods and services
by the company.
Identification of proprietor before applying for a
trademarks:

The person applying for registration of a trademark
must be clearly identified as the proprietor.
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Details Required from the Applicant

2
2.1

2.2

2.3

2.4

2.5

2.6

Requirement
fromApplicantIn case of Individual

Requirement
fromApplicantIn case of Joint owners

Requirement
fromApplicantIn case of Partnership Firm

Requirement
fromApplicantIn case of Companies

Requirement
fromApplicantIn case of Government Departments

Requirement
fromApplicantIn case of statutory organizations/public sector
undertakings:

The full name of the applicant is required. A
business name or trading style is not acceptable as
the name of an individual. This is because a businessname or trading style does not denote the nature ofapplicant (legal entity) - it is more in the nature of analias for the purposes of a trade mark application: If
a trading style or business, name is included on the
Application in addition to the name of an individual
applicant, those details will be captured separately.
In case of joint owners, the full name of each of thejoint owners, whether individuals or companies, isessentially required. A trading style or business nameis not acceptable as the name of the joint owners and,if given in addition to the joint owners, such names
will be recorded separately.
The names of all the partners are essentially required
to be mentioned in an application filed by apartnership firm.
The name under which a company is incorporated isrequired. A trading style or business name, if given,
will be recorded separately.
Abbreviations of the type of company are
acceptable. Annex Al at the end of this Part contains
a list of abbreviations of types of companies which
are recognized as bodies corporate.
Where the applicant is a government department, thetraditional form of the name of the applicant is “theGovernment of India /State of ________ (followedby the name of the department) represented
by____________(name of the authorized person
followed by the name of department)”.

Reference should be made to the statute under whichsuch organization/undertaking is discharging its
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functions. The application can be made in the nameof the organization/undertaking as “Life Insurance
Corporation of India (established under the …….
Act) through its authorised signatory and executed in
the manner prescribed by the rules regulating it.
2.7

2.8

2.9

Requirement
fromApplicantIf applied as Conventional application –Requirement
fromApplicantStatement of Use:

Requirement
fromApplicant

Clear Specification of goods / Servicers:

Requirement
fromapplicantA statement of user showing the date since when themark is used by the applicant or by his predecessor
in title has to be mentioned in the application, unlessthe trade mark is proposed to be used, which is to bementioned specifically. The statement of user will
not be allowed to be changed subsequently.
[Rule 25(15)]The specification of goods and/or services should
not be unrealistically broad otherwise it will impingeon the scope of use or intended use by others. In suchcases, the Registrar may require a declaration toconfirm the intended use of the trade mark.
Applicants should submit their applications in therelevant prescribed forms given in Schedule II of theTrade Marks Rules 2002.
Specific directions given in some prescribed forms
with regard to filling up the form must be compliedwith.

Section18,
Rule 12(1)Rule
13(1),
Rule 14(2)Information required in the Application Form

4
4.1

Rule 27

Form of the Application:

3
3.1

The address of the applicant’s home country inaddition to his address for service in India is to beprovided.

Requirement
fromapplicantApplication must contain the following information: Sec 143,
Rule 16, 18, 19
 Name of the proprietor(s)Rules and 19
 Valid email id
 Principle place of business Address for service
 Type of Mark, i.e. Word, Label, Device etc,
 In case of Convention Applications, only single
priority date should be claimed; separate
applications should be filed if different priority
dates are claimed for different goods and/or
services.
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











Two additional representation of the mark,Description of the trade mark including whether it
is a shape or colour trade mark(When a proprietor of a trade mark applies toregister the trade mark, he or she is seeking
statutory protection for the trade mark. The
proprietor must define sufficiently in theapplication what is to be protected so that
protection can be afforded).
Class numbers under which description belongs (asper classification determined and published by theRegistrar at official web site),
Specification of goods and services (as per list ofitems published in the classification)
If applied mark contains words in a language
other than English/Hindi and/or characters otherthan
Roman/Devnagari:translationandtransliteration of the applied mark,Signature and full name of signatory
Designation of signatory and the capacity underwhich the application is signed.

Note: all the above mentioned information should be
legible and clear
4.2

Requirement
fromapplicantRepresentation of the Trade Mark

4.3

Requirement
fromapplicantRequirement of graphical representation

Rule 15, 28, 30
The representation of the trade mark must clearly (1),identify the trade mark and should be in theprescribed manner as provided in the application
form. It should show clearly all the features of the
trade mark. Additionally, in the case of a trade markthat consists of a 3 dimensional mark or colour
combination it is necessary to make a statement tothat effect in the application. The representations
must be durable and satisfactory.
Section 2(zb)As a trade mark must be able to be represented
graphically for registration. The Registrar will, as amatter of practice, require that the representation of
the trade mark that is included in the applicationmust be a graphical representation. Each trade markconsisting of or containing colours, shape or
packaging must also be accompanied by a concise
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and accurate description of the trade mark. Suchdescriptions will be entered as an endorsement and,taken together with the graphical representation, will
help to define the scope of the registration. The onus
remains with the applicant to provide a suitable
representation of the trade mark.
Size of The Trademarks

4.4
Requirement
fromapplicant4.5
Requirement
fromapplicantRule 28 Section
The size of the representation of the trade mark 15(3)should, where practicable, be no larger than 8cm x Rule 25(10)8cm.Where a series of trademarks is applied for andthe representations of the trade mark are together
and more than 8cm x 8cm then, the representation ofeach trade mark in the series should, wherepracticable, be no larger than 8cm x 8cm and mustbe attached to the application.
The representation must show all the features of the trade mark clearly,
 be of a quality that ensures all the features of the
trade mark will be preserved over time, and be suitable for reproduction.
In case of series Trademarks:

4.6
Requirement
fromapplicantWhere a series is claimed and one trade mark is inblack and white and the others in colour or where theseries is for a number of trade marks in different
colours, an endorsement in the application required –Where the first representation is in black and whiteand subsequent ones coloured:
The second trade mark in the series of trademarks is
depicted in the colour, and as shown in the
representation attached to application form.
(This would be repeated for subsequent trade marksin the series.)
Where there are two trade marks in the series:
The coloured trade mark in the series of trademarks
is depicted in the colours and as shown in the
representation attached to the application form.
Where all the trade marks in the series are coloured:The first trade mark in the series of trademarks is
depicted in the colours and as shown in the
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representation attached to the application.
(This would be repeated for subsequent trade marksin the series.)
4.7

In case of Shape trademarks

4.7.1 Requirement
fromapplicant

The applicant must state on the application form that Rule 29(4)the application is for a shape trade mark. If this is notstated but it is fairly clear, because the trade mark has
been depicted in a three-dimensional (3-D) drawing,
then the examiner should query whether or not thetrade mark is in fact a shape trade mark.

4.7.2 Requirement
fromapplicant

The representation of a shape trade mark or a trade Rule 29(4)mark containing a shape should, where practicable,
be in the form of a perspective drawing that shows
clearly all the features of the trademark. The parts ofthe configuration claimed to constitute therepresentation must be accompanied by a concise
and accurate description of the trade mark. This
description will be entered as an endorsement of theregistration and will thereby serve to help define thescope of the registration. There should be nodiscrepancy between the representation and thedescription and generally the description shouldrefer to the representation to make clear what therelationship between them is.

4.7.3 Requirement
fromapplicantWhere more than one view of the trade mark is filed,representation of the each view of trade mark should(where practicable, in the size of not larger than 8cm
x 8cm) be attached to the application or uploaded
along with application if filed online.

4.7.4 Requirement
fromapplicantIf the representation of the trade mark provided by
the applicant does not show clearly all the featuresof the trade mark, the Registrar may require up to 5
further views of the trade mark.

4.7.5 Requirement
fromapplicantIf the description or representation of the trade mark Rule 36
is not satisfactory as it does not demonstrate thenature of the trade mark sufficiently or able showeach feature of the trade mark sufficiently, theapplicant may be asked to provide a description or
further description of the trade mark and a specimenof the trade mark within one month from the date ofissuance of the letter. If the applicant fails to comply
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4.7.6 Requirement
fromapplicantBlack and white or colour photographs of shapetrademarks which have been mounted on goodquality paper will be acceptable as representations of
the trade mark. They must, however, be able to be
reproduced for the purposes of advertisement. If
there are doubts as to how the photograph/s would
reproduce, a black and white photocopy should betaken. If the photocopy is clear then the photographs
are acceptable - if not then the applicant should berequested to furnish clear photographs. A maximumof two copies of each photograph may be required.
In case of online filing the photographs should bescanned uploaded along with application.
Photographs should be clear originals as the officewill not accept photocopies of photographs. Nor will
"instant" type photographs be accepted as these fadeover time.

4.8

In case of trademarks: as Combination of Colours

4.8.1 Requirement
fromapplicantIf the applicant is claiming a combination of colours, Rule 29
as applied to the goods or their packaging or as usedin relation to their services, as a trade mark, theyshould claim this by identifying the trade mark as acolour trade mark on the application form. The exact
description of the colour combination as per
International Classification System of Colours (to beverified) As well as supplying a graphicalrepresentation of the trade mark, the applicant mustalso provide a concise and accurate description of the
trade mark on the application. The description, whichshould state precisely what the mark consists of andhow the description relates to the representation, will
be entered as an endorsement of the registration andwill thereby help define the scope of the registration.
An example of a suitable form of description for a
trade mark which consists of a combination ofcolours applied to a pharmaceutical capsule wouldbe:
The trade mark consists of a maroon colour applied to
one half of a capsule at one end, and a gold colour
applied to the other half, as illustrated in the
representation on the application.
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4.8.2 Requirement
fromapplicantApplication for the registration of the trade mark shallbe submitted in triplicate with five copies ofadditional representation.
Representations of the trademark in additional
representation / application shall correspond exactlywith one another.
Additional representation shall consists specificationand classes of goods / services for which theregistration is sought, name and address of theapplicant, name and address of the agent, if any, theperiod of use, if any, and such other particulars
required by registrar from time to time.
If an applied trademark is claimed as combination ofcolour, it is required to submit one reproduction ofmark in black & white and rest four in colours.
The reproduction furnished shall consist of threedifferent views,
If registrar considers that the reproduction is not able
to show all features of three dimensional mark hemay call upon to furnish within two months up to five
further different views and a description by words ofthe marks,
If registrar considers the furnished different views is
not sufficiently show the particulars of the trade
marks, he may call up the specimen of the trade
marks.
If the applied trade mark consists of shape of thegoods of its packaging, the reproduction furnished by
the applicant shall consist of the five different views
and a description by words of the marks.
If registrar considers the furnished different views is
not sufficiently show the particulars of the trade
marks, he may call up the specimen of the goods orpackaging as the case may be.

4.8.3 Requirement
fromapplicantIf a trade mark is always used in particular colours, adifferent form of endorsement would be required.
This situation is most likely to occur when a trade
mark which is lacking in Capability to distinguish isshown through evidence of use to be capable ofdistinguishing when used in particular colours.
Acceptance for registration may be allowed on thebasis of a limitation to colour.
endorsement will be as follows:
Page | 21

Registration of this trade mark consists of colours …
Note:
If an applicant chooses to limit to some colours, thesame form of endorsement would be the appropriate
one.
A representation that includes words in a language
other than English/Hindi and/or characters other than
Roman /Devnagari characters.

5

5.1

Requirement
fromapplicantWhere a trade mark includes words in a language other Rule 33
than English/Hindi and/or characters other than
Roman/Devnagari characters, the applicant must filean English/Hindi translation and/or transliteration in
support of the trade mark application.

5.2

Officer
ActionAn endorsement must be entered on the Register for
all trademarks containing words in a language otherthan English/Hindi and/or characters other than
Roman/Devnagari characters.

5.3

OfficeActionWhere an applicant has provided the translation /transliteration, an endorsement will be entered on thesystem.

5.4

OfficeActionWhere no translation / transliteration have been
provided, the examiner should request one and enter
the appropriate endorsement on the system when theinformation has been received through TM-16.
In absence of the compliance of such request,
Application shall be deemed to have beenabandoned for non-compliance.

5.4

OfficeActionIn the case of the trade mark containing words not inEnglish / Hindi, the form the endorsement shouldtake is as follows: The applicant has provided
that the translation of the(NATIONALITY/LANGUAGE)
words
appearing in the trademark is…
Where the trade mark contains words in charactersthat are not Roman/Devnagari characters, the form ofendorsement should be as follows:
The applicant has provided that the (NATIONALITY /LANGUAGE)
characters
appearing in the trade mark may be transliterated as… which may be translated into English as…

5.5

Concept

The information provided by applicants in formality
Page | 22

related matters should be accepted as correct unlessotherwise found during the examination.
Specification of the goods and/or services for which
registration is sought

6
Concept

An application for registration of a single trade mark Section 18(2)may be made in respect of goods and/or services in
one or more classes.
Note:
The applicant should specify the goods and/or
services in relation to which the application is made.
A specification that claims registration for all goods,
products or services etc. in a particular class would be
regarded as too wide.

6.1

Requirement
fromapplicant

The applicant must specify, in the manner set out in Rule 103
the Rule 103, the goods and/or services in respect ofwhich the registration is sought.

6.1.1 Requirement
fromapplicantWhere the application is in respect of more than one
class the goods and/or services it must be grouped
together according to class number.

6.1.2 Requirement
fromapplicantA class number must be selected for each group of
goods and/or services. Where the application is inrespect of more than one class the goods and/or
services must be grouped together according to classnumber and the groups of goods and/or services
must be presented in ascending numerical order of theclass number.

6.1.3 Requirement
fromapplicantAs far as practicable, the applicant should specify the Section 7
goods and/or services for which registration is soughtin terms appearing in the Classification as publishedby the Registrar This listings are available through
Trade
Marks
Registryoronwebsitewww.ipindia.nic.in

6.1.4

Adequate information regarding the goods and/or
services should accompany any specification where
the goods and/or services cannot be described using
the terms preferred at 6.1.3 above.

6.2

Limitations on the specification.

Concept

Limitations exist as to the scope of the goods and/or Section 29(2)services that may be claimed in a specification.
Page | 23

These limitations have been included in thelegislation in light of the fact that infringement action
under the provisions of the Trade Marks Act 1999
may be taken in respect of unauthorized use of a trade
mark on:goods of the same description as that of goods(registered goods) in respect of which the trade markis registered; orservices that are closely related to registered goods;
orservices' of the same description as that of services(registered services) in respect of which the trade
mark is registered; orgoods that are closely related to registered services
present Act (TM Act 1999) has a much broader
provision than that which exists under the Trade &Merchandise Marks Act 1958 as in the latter
infringement actions was limited to cases where thegoods in relation to which the unauthorized use
occurred were exactly the same as the goods forwhich registration was granted, it is therefore
anticipated that applicants will now limit their
specifications to goods and/or services that reflect
their current and/or intended future trading
activities. To do otherwise would be to their own
detriment in that they would leave their registrations
open to non-use actions, in which the onus now lieson the registered owner to show that they have usedor there is an intention, in good faith, to use the trade
mark on all the goods and/or services specified.
6.2.1 Concept

Use of the expressions, "all goods", "all services", Rule 25(15)"all other goods" and "all other services" in a
specification of goods and/or services in respect ofwhich registration is sought is prohibited. Use of
these expressions or equivalent expressions such as"all items" or "all products" will not be accepted as
the whole or part of a specification. Where anapplication is made in respect of specific goods
and/or services but also includes one of the above
non-specific expressions in the specification, thatapplication will be taken as filed but the applicant
will be requested, as soon as practicable after filing,
to delete the prohibited expression. If, at the time of
examination the expression has not been deleted, thePage | 24

examiner will again require the expression to bedeleted. Additional items will not be able to beentered in its place.
6.2.2 Concept

An application may not claim as part of the Rule 25(15)specification of goods and/or services a range ofgoods or services in a particular class which, in theRegistrar's opinion, is unrealistically broad in that incommercial terms it is highly unlikely that theapplicant would deal in or provide that range ofgoods or services. In such instances the applicant
may not able to demonstrate that the trade mark isused or intended to be used on all the goods and/or
services specified.
For example if the applicant specified the classheading of class 9 the Examiner may consider the
specification unrealistically broad and advise theapplicant accordingly. To overcome the problem, theapplicant would need to confirm his or her intention
to use on all the goods or services specified in thatbroad specification by making a declaration to theRegistrar in the form of an Affidavit. This Affidavit
is required to satisfy the Registrar that theapplication meets the requirements of Rule 25(15) of
the Act in respect of all the items specified for theclass or classes in question. Alternatively, the applicant
may wish to amend the specification in a manner that
limits the scope of the application to a morecommercially realistic range of items. It should be
noted that the provisions of Rule 25(15) will usually
be invoked only in relation to a wide range of goods
or services within a class, rather than a wide range ofitems across classes

6.3

Problems with a specification

6.3.1 Office
ActionWhile a preliminary check of classification is made aspart of the check for compliance with minimum
filing requirements, it is the examiner's responsibility
to ensure that the goods and/or Services have been
properly specified and classified. For a single classapplication, this includes checking that the goods or
the services are in the class that has been selected forthe application. For a multi-class application theexaminer must check that the goods or the services
Page | 25

grouped within each of the designated classes areproperly classified. The following problem mayarise.
6.3.2 Office
ActionIf single application is filed for goods or services Rule 25(19)falling in more than one class but some of the goods
and/or services specified fall not in that class but inother classes, the applicant has the option of either
deleting the goods and/or services which do not fall in
the nominated class, or of classes to cover those
items. Additional fees will be required to add
additional classes providing divisional fee and classfee paid.
The examiner should advise the applicant of these
options. If the applicant chooses to add class, theexaminer should advise what additional fees are
required and also advise that examination of theapplied Trademark related to ability of registration
will not proceed until the fees are paid.
Note Where an item of goods or a service is properlyclassified in the class nominated but could also fall
into classes not nominated, it will be taken that theapplicant only wished to specify the good or service
in the class nominated. No further enquiry will bemade and no additional classes will be added.

6.3.3 Office
ActionWhere only one class has been nominated but goods
and/or services in more than one class have been
specified and the applicant has paid the fees for the
extra classes, the examination will continue and theapplicant will be required to consent to the insertion of
the appropriate class numbers.

7

Signature and Date

Requirement
fromtheApplicantRequirement
fromtheApplicant

The application form must be signed and dated.

Requirement

If the application was signed on behalf of theRule 25(1)The application must be signed by the applicants or a Section 145
person authorized to sign the application on theirbehalf. Persons who may sign on behalf of theapplicant are defined to section 145 who is (a) legal
practitioner (b) Trade Marks Agent (c) a person in thesole and regular employment of the principal.

Page | 26

fromthe applicant/s, the name and designation of the person
Applicant
who signed the application must be given so that it canbe determined if the person who signed the application
had authority to do so.
Requirement Where an application for registration of a trade markfrom
the is in the name of a trustee or trustees it should be
Applicantsigned by the managing trustee or trustees or a person
who is empowered to sign on behalf of the trustee ortrustees.
Requirement If persons who are not authorized to sign have donefromthe so, such as an accountant who is not in the sole
Applicantemployment of the applicant, then the applicant
should be requested to have an authorized person
sign the application form.
Requirement If the application is in the name of more than one
fromthe person and the individuals themselves signed theApplicantapplication, rather than someone on their behalf, eachindividual must sign the application form.
Requirement The name of each signatory must be written legiblyfromthe (preferably in block capitals) under or beside the signature.
ApplicantThis is so that the person who signed the application canbe identified.
Requirement Where the application form has not been dated, no requestfrom
the should be made for the applicant to provide thisApplicantinformation. The date on which the application was signed
is not vital information as the filing date is the date ofreceipt in the Office which is based on the "fee stampdate".
Fees:

8
Requirement
fromapplicant

The application should be submitted along with the Rule 11(3) &appropriate fee as per Schedule I.
(4)
Where the specification exceeds 500 characters, excess Rule 25 (16)character fee is payable in form TM-61.

9Consequences of non-compliance of filing requirements

Office Action The Registrar will notify the applicant of deficiencies Rule 36
in the application with respect to the filing
requirements and allow the applicant one month time
to rectify the same. If the deficiencies are not rectified
in the time allowed, the application may be treated asPage | 27

abandoned.
10

Data Entry

Office Action The data entry shall be made in the EDP module. The
device marks shall be separately scanned in original
colours and shall be uploaded in the system.
Data entries shall be verified by officer in-charge of
Receipt and EDP Section.
After verification the application moves through the
TMS system for examination except where theapplication contains a device mark. In such a case, theapplication moves for Vienna codification.
11

VIENNA Codification

Office Action In the VIENNA CODIFICATION SECTION(VCS), the authorized officials shall codify the
figurative elements of the trade marks appearing in
the application for registration. The officials of the
VCS shall enter codes as per the “International
Classification of the Figurative Elements of Marks
under the Vienna Agreement” and enter theapplication codes in the specified module of the
TMS system.
Thereafter the application moves through the TMS
system for examination.

Page | 28

Chapter II
Examination of Applications filed for Registration of Trademarks
Introduction and Scope
Once the data entry of an application for registration of a trademark is made and digitization of
the trademark application & other connected documents, if any, is complete, the application isallotted to an examiner for examination of application under the provisions of the Trademarks
Act & Rules.
The word 'Examiner' hereinafter includes any officer assigned the duty of examination of
applications.
The allotment of applications to existing examiners for the purpose of examination is done
automatically through the Trade Marks System and strictly in order of the date and time ofsubmission of applications.
However the applications in which request for expedited examination is made on form TM-63
and the same is approved by the officer in charge of the Receipt & EDP Section of therespective branch of the TMR, these applications shall be allotted for examination on priority
basis.
The Examiner ordinarily gets a lot of 20 applications in his account. The Examiner looks at theapplication detail and the original application (viz TM-1, TM-51, etc.) and scrutinizes theapplication as toa. whether the application has been filed in the manner as prescribed in the Trademarks
Rules 2002
b. whether the trademark applied for registration can be refused registration(- on relative
grounds and/or absolute grounds) under the Trademarks Act 1999, if yes, the reasons;andc. whether any restriction, condition or limitation is required to be imposed, in case theapplication is accepted for registration
The Examiner shall thoroughly examine the application as above and make a search of earlier
trademarks which are identical with or similar to the mark being examined and shall prepare his
consolidated examination report through the system containing therein, as for as applicable,i.

all the objections relating to formality requirements as to filing of application,ii.

objections to acceptance of the application for registration of the trademark under
Section 9, 11 and other Sections of the Trademarks Act 1999, andPage | 29

iii.

proposals for conditions of acceptance or limitation to use of the mark, in case theapplication is accepted for registration.

In case the Examiner is unable to examine the application thoroughly because of any formality
requirement, for example, the trademark is in a language other than English or Hindi, he may
ask the applicant to comply the requirements and he may defer the examination, till therequirements are complied with.
In this document any reference to ‘the applicant’ in connection with communication of any
document to him or compliance of any requirement or reply by him shall hereinafter include
reference to the authorised agent of the applicant, unless otherwise appears from the context.

This chapter deals with practice and procedures involved in examination of trademark
applications.
Sr.
No.

General Description

1.

Identification of Nature of Application

1.1

OfficeActionRelevant
provision of the
Act & Rules

The examiner shall identify the nature of the Schedule I to
application for registration, on the basis of the form the Trademarks
submitted.
Rules 2002
The prescribed forms for various types ofapplications are as followsType of application

Form

Application for registration of
trademark for goods or services
included in any one class
Application for registration of
trademark for goods or services
included in any one class and withpriority claim under Section 154
A single application for registration of
trademark for different classes ofgoods or services
A single application for registration of
trademark for different classes ofgoods or services and with priority
claim under Section 154
Application for registration ofCollective mark for goods or services
included in any one class
Application for registration of

TM-1

TM-2

TM-51

TM-52

TM-3

TM-64
Page | 30

1.2

OfficeAction2
2.1

Collective mark for goods or services
included in any one class with priority
claim under Section 154
A single application for registration of TM-66
Collective mark for different classesof goods or services
A single application for registration of TM-67
Collective mark for different classesof goods or services with priority
claim under Section 154
Application for registration of
TM-4
Certification mark for goods orservices included in any one class
Application for registration of
TM-65
Certification mark for goods orservices included in any one classwith priority claim under Section 154
A single application for registration of TM-68
Certification mark for different classesof goods or services
A single application for registration of TM-69
Certification mark for different
classes of goods or services withpriority claim under Section 154
An application to register a series
TM-8
trademarks under for a specification of
goods or services included in a classor classes
An application to register a series
TM-37
trademarks for a specification of
goods or services included in a classor classes, with priority claim under
Section 154
In case the application is not on proper form, theexaminer shall examine the application as per thenature of the application submitted irrespective of
the form number mentioned and require theapplicant to correct form of the application by filinga request on form TM-16.
The objection, for example, should be raised asfollowsThe application is made on form TM-1, forcertification mark in respect of goods or services
falling in a class, the form of the application should
be corrected as TM-4 by filing a request on form
TM-16.
Ensuring the appropriate name of the Applicant:OfficeactionThe examiner shall ensure that the name of theapplicant claiming to be proprietor of the trademark
is properly mentioned in the application.
Page | 31

2.2

Concept

Section 18 of the Trade Marks Act states that ‘any Section 18
person claiming to be the proprietor of a trade markused or proposed to be used by him, who isdesirous of registering it, shall apply in writing to
the Registrar in the prescribed manner for theregistration of his trade mark…’
An application for registration of a trademark may
be made by/on behalf of an Individual, a Company,
Society, Trust, Government body or a Public Sector
Undertaking, a Partnership firm or two or moreindividuals in business together who jointly own a
trademark. The circumstances under which two or
more persons may apply for registration of a
trademark are set out in section 24 of the Act.
If the applicant is Individual-

The full name of the individual is required. A
business name or trading style is additional
information which shall be provided along with thename of the individual.
The applicant name, in such case, should be like
“Ram Kumar Verma, an Indian National trading as
Verma Trading Company”
If the applicant is Company

A company may make an application forregistration of a trademark in its own corporate
name. The nature of registration, country ofincorporation and the law under which the company
is registered, are to be mentioned.
The applicant name, in such case, should be likeM/s Singh Industries Limited, a company registeredin India under Indian Companies Act 1956
A company being an incorporated body has its own
identity other than its directors, therefore a directorof the company cannot be the applicant, although
the application can be signed and submitted by him,
if he is so authorised.
If the applicant is Firm

A partnership firm may make the application, insuch case, the names of all partners shall bementioned, like A, B, C, & D trading as M/s XYZ,an Indian Partnership Firm registered under IndianPartnership Act 1932.
When partnership includes a minor in thepartnership, the name of guardian representing theminor shall also be mentioned.
Page | 32

If the applicant is Trust

Application may be made on behalf of a trust. In
such case, the name of its managing
trustee/chairman representing the trust should also
be mentioned.
The applicant name, in such case, should be likeM/s XYZ, a trust registered in India under Indian
Trust Act 1882, and represented by Mr X, itsManaging Trustee.
If the applicant is a Society

Application may be made on behalf of a society.
The applicant name, in such case, should be likeM/s XYZ,
a society registered in India under
Maharashtra Co-operative Societies Act through its
secretary Mr. A.
If the applicant is Government

The Central or State Government or any
undertaking/company owned or controlled by such
Government may also make application forregistration of trademark like any other person.
Where the applicant is a government department.
The applicant name, in such case, should be like
“The Government of India/ Government of_(state)___Represented by_ (name of the
Department)___through its Secretary Mr. xxx
If the applicant is Governmental undertaking-

The application can be made in the name of theundertaking and executed in the manner prescribedby the rules regulating the body. When the applicant
is any government undertaking, a reference shallalso be made to the Authority (usually legislative)
under which the undertaking functions, along with
the name of the undertaking.
The applicant name, in such case, should be likeM/s Life Insurance Corporation, a Public Sector
undertaking established under the Life Insurance ofIndia Act 1956
If there are Joint Applicants

Section 24 enables registration of two or more
persons to be registered as joint proprietors of the
trademark, where the mark is used or proposed toPage | 33

be used in relation to goods or services connectedwith the joint applicants.
The applicants’ name, in such case, should be likeM/s XXXX a company registered in India under
Indian Companies Act 1956 and M/s YYYY a
company registered in India under IndianCompanies Act 1956........claiming to be joint
proprietors of the trademark.
2.3

OfficeactionIn case the name of the applicant is not
appropriately mentioned, the Examiner should raise
objection as followsThe application appears to have been filed in thename of a partnership firm, names of all Partnersof the firm should be brought on record by filing arequest form TM-16

3

Ensuring the submission of the TM-48 / Power ofAttorney

3.1

OfficeactionThe examiner shall ensure that duly stamped TM48/Power of Attorney is filed, in case theapplication has been submitted by a person otherthan the applicant

3.2

Concept

In case the application has been not been filed & Section 145
signed by the applicant but by any other person Rule 21
claiming to be the agent of the applicant, a power ofattorney duly executed by the applicant in favour ofthat person on form TM-48, is required to be filed.
The agent can be a legal practitioner (Advocate), a
registered trademark agent or a constituted attorney(a person under sole and regular employment) of
the applicant.
A Power of Attorney in favour of a firm without thename of any individual agent or attorney should not
be accepted.

3.3

OfficeactionIn case no proper Power of Attorney is submitted
and the application has been submitted by a person
other than the applicant, the Examiner should
communicate objection as
The application has been submitted by a person
other than the applicant, a duly stamped Power ofAttorney in favour of a particular agent should be
filed.

4

Ensuring about the applicant’s principal place ofbusiness
Page | 34

4.1

OfficeactionThe examiner shall ensure that the applicant’s
principal place of business and the address forservice of the applicant is properly mentioned in theapplication.

4.2

Concept

Every application for registration of trademark is Section 18(3),required to have the principal place of business of 143
the applicant.
Rules 17 &18
In case the applicant has no principal place ofbusiness in India, the applicant’s address for service
in India should be mentioned in the application.
The applicant who has a principal place of businessin India may also mention another address forservice in India which may be the address of theapplicant’s authorised agent.

4.3

OfficeactionIf the Principal Place of business of the applicant is
not mentioned, or if the applicant has no Principal
Place of business in India and the applicant’s
address for service in India is not mentioned, theExaminer shall communicate objection as followsThe Principal Place of business of the applicant
should be brought on record by filing a request on
form TM-16, orThe applicant’s address for service in India should
be brought on record by filing a request on form
TM-16, since the applicant has no principal placeof business in India.

5

Ensuring transliteration and translation of
trademark in non-English or non-Hindi characters.

5.1

OfficeActionIf the trademark applied for registration is in alanguage other than English or Hindi, the examiner
shall ensure that a transliteration is properly
mentioned in the application.

5.2

Concept

Where a trade mark contains a word or words in Rule 33
scripts other than Hindi or English, a sufficienttransliteration into roman script and its translationof each such word in English shall be endorsed on
the application form and the additional
representations
thereof,
and
every
such
endorsement shall state the language to which theword belongs and shall be signed by the applicant
or his agent.

5.3

OfficeactionIf the trademark applied for registration is in alanguage other than English or Hindi, the Examiner
shall defer the examination; and communicate it as
deficiency to the applicant concerned and require
the applicant to provide a sufficient transliteration
into roman script and its translation in English by
Page | 35

filing a request on form TM-16.
The objection, for example, should be raised asfollowsThe trademark applied for registration is in alanguage other than English or Hindi; you should
provide the transliteration of the mark into roman
script and its translation in English by filing arequest on form TM-16.
Only after compliance of this the application shallbe further examined.
6

Ensuring the consent of a person or his legal
representative, if the trademark contains a name or
representation of that person

6.1

OfficeactionIf the trademark applied for registration contains aname or representation of a person, the Examiner
shall ensure that the consent of that person or his
legal representative is submitted with theapplication

6.2

Concept

Where the name or representation of any person Section 14 andappears on a trade mark the applicant shall furnish Rule 34
the consent in writing of such person in case he isliving or, in case his death took place within twenty
years prior to the date of the application forregistration of the trade mark, the consent of his
legal representative, as the case may be, to the useof the name or representation.

6.3

OfficeactionIf the trademark applied for registration contains aname or representation of a person in it, and noconsent of that person or consent of his legal
representative ( if that person is dead) is submitted,
the Examiner shall communicate objection as
followsThe identity of the person, whose portrait appearson the trademark, should be disclosed and theconsent of that person or, the consent of his legal
representative, if he is expired, should be furnishedin writing.

7
7.1

Ensuring submission of draft regulations in case of
an application for registration of a collective mark

OfficeactionIf the application is made for collective mark onform TM-3, TM-64, TM-66 or TM-67, theExaminer shall ensure that a draft regulation onform TM-49 regarding association of persons
authorised to use the mark is submitted along with
Page | 36

the application.
7.2

Concept

The collective mark is owned by an association of Section 63
persons not being a partnership. It belongs to a Rule 128
group and its use therefore is reserved for membersof the group. The primary function of a collective
mark is to indicate a trade connection with theassociation or organization who is the proprietor of
the mark.
In case of application for registration as collective
mark a draft regulation under Section 63 of theTrade Marks Act 1999, governing the use of thecollective mark is required to be submitted intriplicate, with the application on form TM-49.
which shall include –a) the name of the association of persons and theirrespective office addresses;b) the object of the associationc) the details of membersd) the conditions for membership and relation ofeach member with the group;e) the persons authorised to use the mark and thenature of control the applicant exercise over theuse of the collective markf) the conditions governing use of the collective
mark, including sanctionsg) the procedure for dealing with appeals against
the use of the collective marksuch other relevant particulars as may be called
for by the Registrar

7.3

OfficeactionIf the application is made for registration of acollective mark on and no proper draft regulation
on form TM-49 is submitted with the application,
the Examiner shall defer the examination; andcommunicate it as deficiency to the applicant
concerned and require the applicant to furnish
proper draft regulation on form TM-49 by filing arequest on form TM-16.
The objection, for example, should be raised asfollowsA proper draft regulation on form TM-49 as per
Rule 128 of the Trade Marks Rules 2002 should besubmitted with the application by filing a request on
form TM-16.
Only after compliance of this the application shallbe further examined.
Page | 37

8

Ensuring submission of draft regulations in case of
an application for registration of a certification mark8.1

OfficeactionIf the application is made for Certification mark onform TM-4 or TM-65, TM-68 or TM-69, theExaminer shall ensure that a draft regulation onform TM-49 regarding competence of the
proprietor for certification of relevant goods orservices, is submitted along with the application.

8.2

Concept

The purpose of a certification trade mark is to show Section 74
that the goods or services in respect of which the Rule 135
mark is used have been certified by somecompetent person in respect of certain
characteristics such as Origin, mode ofmanufacture, quality etc.
Application for registration should be made on
form TM-4 or TM-65, TM-68 or TM-69 as the casemay be, accompanied by prescribed fee. A draft
regulation under Section 74 of the Trade Marks Act
1999 in triplicate should also be deposited on form
TM-49 , which shall includea) a description of the applicant;b) the nature of the applicant's business;c) the particulars of infrastructure like R&D,
technical manpower support;d) the applicants competence to administer thecertification scheme;e) the applicants financial arrangement;f) an undertaking from the applicant that there will
be no discrimination of any party if they meetthe requirements set down in the regulations;g) the characteristic the mark will indicate in thecertified goods or in relation to the rendering ofcertified services;h) the manner of monitoring the use of the mark in
India; andi) such other relevant particulars as may be called
for by the Registrar.

8.3

OfficeactionIf the application is made for registration of a
Certification mark on and no proper draft regulation
on form TM-49 is submitted with the application,
the Examiner shall defer the examination; andcommunicate it as deficiency to the applicant
concerned and require the applicant to furnish
proper draft regulation on form TM-49 by filing arequest on form TM-16.
The objection, for example, should be raised asfollowsPage | 38

A proper draft regulation on form TM-49 as per
Rule 135 of the Trade Marks Rules 2002 should besubmitted with the application by filing a request on
form TM-16.
Only after compliance of this the application shallbe further examined.
9

Ensuring
submission ofadequatepriority
documents, in case of applications with priority
claims9.1

OfficeactionIf the application is made on form TM-2, TM-37,
TM-52, TM-64, TM-65, TM-67 or TM-69, withpriority claim by virtue of similar application madein any conventional country, the Examiner shallensure that documents in support of priority claim
are submitted along with the application.

9.2

Concept

Section 154 (1) of the Trademarks Act, 1999 Section 154
empowers the Central Government to declare any Rule 26
country or a group of countries or any intergovernmental organization, as a convention
country, which affords to Indian citizens same
privilege as granted to its own citizens.
India has ratified the Paris Convention forProtection of Industrial Property through a gazettenotification No S. O. 1041(E) dated 3rd September
1998, which came into effect from 7th December
1998. As on the date of India’s ratification, there
were 150 countries as members of the convention.
India declared all the 150 countries as convention
countries.
According to Section 154 (2) of the Trademarks
Act, 1999 where a person, who has made anapplication for the registration of the trade mark in
the convention country, makes an application forregistration of the trade mark in India within six
months after the date on which the application wasmade in the convention country, the trade markshall, if registered, under the Trade Marks Act,
1999 be registered as of the date on which theapplication was made in the convention country.
Where a right to priority is claimed by reason of an
application for protection of a trade mark duly filed
in a convention country under section 154 acertificate by the Registry or competent authorityof that Trade Marks Office is required to be
included in an application for registration, and it
should include the particulars of the mark, thecountry or countries and the date or dates of filing
Page | 39

of application.
The application should also include a statement
indicating the date of filing of the convention
application, the name of the convention country
where it was filed, the serial number, if any, and astatement indicating that priority is claimed
9.3

OfficeactionIf the application is made on form TM-2, TM-37,
TM-52, TM-64, TM-65, TM-67 or TM-69, withpriority claim by virtue of similar application madein any conventional country, and no document insupport of priority claim is submitted, theExaminer shall communicate the objection as
followsAuthentic documents in support of priority claim
should be filed

10

Examination of application as to classification of
goods and services

10.1

OfficeactionThe examiner shall ensure that the application forregistration of a trademark has been filed withproper specification of goods and/or services andwith proper classification of such goods and/or
services.

10.2

Concept

An application for registration of trademark is filed Section 7
only in respect of specific goods or services; Rule 22
therefore the application is required to have anexact specification of goods or services in respectof which the registration of the trademark is sought.
For the purpose of registration of trademark the
goods or services are classified, as for as may be, in
accordance with current edition of International
Classification of Goods and Services (NICE
Classification) published by the WIPO.
Section 8 of the Trademarks Act, 1999 authorises
and Rule 22(2) of the Trade Marks Rules 2002
requires that the Classification of Goods andServices for the purpose of registration of
trademark, be published by the registrar of
trademarks. Accordingly the Classification ofGoods and Services for the purpose of registrationof trademark have been published and put up on theoffice website.
An application is filed for registration of trademark Section 18(2)in respect of goods or services falling in aparticular class of the International Classificationof Goods and Services, as published by theRegistrar of trademarks. Under Section 18 (2) ofPage | 40

the Trademarks Act, 1999, a single application canhowever be filed for registration of trademark in
respect of goods and/or services falling in morethan one of such classes.
10.3

OfficeactionIn case the class of goods or services mentioned in
the application is other than the relevant class of theInternational Classification of Goods and Services,as published by the Registrar of trademarks, and no
aspect of such goods or services falls in the classmentioned in the application, the Examiner shallsuggest the appropriate class for those goods orservices and require the applicant to correct theclass through a request on form TM-16.
For example, if an application for registration of
trademark in respect of ‘cosmetics’ is filed in class
34, the Examiner shall require the applicant tocorrect the class as ‘3’ by a request on form TM16.
If some of the items of goods or services mentioned
in the application is other than the relevant class of
the International Classification of Goods andServices, as published by the Registrar of
trademarks, but some items fall in the appropriateclass, or some category of such goods or services
fall in that class, the Examiner shall require theapplicant to delete items not falling in the classapplied and confine the goods or services which fallin that class through a request on form TM-16.
For example, if an application for registration of
trademark in respect of ‘cosmetics’, ‘medicines’
and ‘readymade garments’ is filed in class 3, theExaminer shall require the applicant to delete items‘medicines’ and ‘readymade garments’ from thespecification of goods by a request on form TM-16.
However, if the application is made for registrationof trademark in respect of goods or services fallingin more than one class, and some items mentioned
in the specification of one particular class don’t fallin that class but fall in some other class, theapplicant may amend the application to add
additional class or classes on payment of theappropriate class fee and the divisional fee.

10.4

OfficeactionIn case the specification of goods or services
mention in the application is too wide or vague, theExaminer shall raise objection to this effect.

Page | 41

10.5

Concept

The application for registration of trademark in Rule 25(15)respect of all goods or services or large variety ofgoods and services in a class, may be refused
registration unless the Registrar of trademark is
satisfied that the specification is justified by the useof the mark or the applicant intends to make inrespect of all such goods/services. Accordingly
goods or services, in respect of which application ofregistration of trademark is made, should bespecific and should not be wide or vague.
Some examples of wide and vague specification are
as followsIn Class 7, claims to ‘machines’ without further
qualification should be objected to. The following
gives examples of descriptions which areacceptable, since in each case the end use of themachine has been identified:Machines for agricultural purposes;
Machines for use in manufacturing processes;
Machines for the 42woolen industry
Or other specific machines, e.g. washing machines.
Applications filed in Class 9, which continue tomake vague and generalized reference to ‘electric,
electrical and/or electronic apparatus, devices,
equipment and instruments’ should be objected towhether listed separately or in combination.
The Class 42, 43 and 44 headings are acceptable,
but applications which include claims such as‘services that cannot be classified in other classes’or ‘miscellaneous services’ will face an objection
under Rule 25(15).
The class heading to Class 45 is:“Personal and social services rendered by others
to meet the needs of individuals; security services
for the protection of property and individuals”.
The first part of the heading, ‘Personal and social
services rendered by others to meet the needs ofindividuals’ is considered too vague andconsequently a Rule 25 (15) objection should beraised against applications containing thisdescription. Objections will also be taken against
applications where specifications contain either‘personal services’ or ‘social services’ as
individual elements, e.g., ‘personal services
Page | 42

rendered by others to meet the needs ofindividuals’ or the like descriptions. The second
part of the heading, ‘security services for theprotection of property and individuals’ issufficiently precise and will not attract anobjection.
The objection to this effect should be raised asfollowsThe specification of goods/services mentioned in
respect of class xx, is very vague and wide. You
should provide exact items in respect of which thetrademark is sought to be registered, by filing arequest on form TM-16.
11
11.1

Examination of application as to relative grounds forrefusal of registration

OfficeactionThe Examiner shall make a search of same orsimilar earlier trademarks in respect of same orsimilar description of goods or services, and in casesuch earlier trademarks are found in the name of
persons other than the applicant, he shall raise
objection to acceptance of the application forregistration on relative grounds.
The search of same/similar trademarks is performed
through the Trade Marks System.
The system enables examiner to make search withthree modes-word mark search, phonetic searchand device mark search. The system automaticallyselects the class(es) for search of earlier marks as
per the application filed. The Examiner may also
add more class(es) for search
In the word mark mode the examiner can makesearch of earlier marks on the basis of selectedcharacters as prefix or suffix.
In the phonetic search the Examiner may specify
one or two phonetic variant of the trademark, andsystem will fetch all earlier trademarks having
phonetic similarity with the trademark applied.
In device mark search, the system enables examiner
to find out earlier trademarks having same/similarfeatures.
All trademarks consisting of any figurative
elements, are codified as per International
Classification of the Figurative Elements of Marks(commonly referred to as ‘Vienna Codification’).
The examiner in this mode has to put correct
Vienna code(s), and the system will fetch all
Page | 43

trademarks bearing that Vienna code(s).
The examiner selects same/similar earlier marks
from the list of trademarks provided by the system.
The details of the selected marks can be seen by the
Examiner and he then finally selects conflicting
marks, if the earlier marks belong to persons otherthan the applicant. In case same/similar earlier
marks belong to the applicant the examiner shallselect such marks as associated trademarks.
11.2

Concept

According to Section 11(1) of the Trade Marks Act Section 11(1)1999 - a trade mark shall not be registered if, Explanation in
because of its identity or similarity with earlier Section 11 (4)trade mark(s) and because of identity or similarityof goods or services covered by such trademarks,
there exists a likelihood of confusion on the partof the public, which includes the likelihood of
association with the earlier trade mark.
Explanation in Section 11 (4) of the Trade Marks
Act 1999, defines earlier trade mark. Under thisprovision,“a registered trade mark or an application under
section 18 bearing an earlier date of filing or aninternational registration referred to in section 36E
or convention application referred to in section 154
which has a date of application earlier than that of
the trade mark in question, taking account, whereappropriate, of the priorities claimed in respect of
the trademarks;”.
Thus earlier trademark will include an earlier
registered mark and a prior pending application
Section 2(1)(h)of the Trade
Identical trademark
Marks Act 1999
A mark is identical with the trade mark where it
reproduces without any modification or additions,
all elements constituting the trade mark or where,
viewed as a whole it contains differences so
insignificant that they may go unnoticed by anaverage consumer
Similarity of marks
The terms similarity of trademarks is to beconstrued as “deceptively similar” which
expression has been defined “as so nearly
resembling that other mark as to be likely to
deceive or cause confusion”.
Likelihood of confusion
Page | 44

For likelihood of confusion to exist it must be
probable; it is not necessary that actual confusion
has arisen or should arise in the mind of public i.e.
the average consumer.
The three most relevant factors in examination of
trade mark applications by the Office will usuallybei. the similarities and differences between therespective trademarks,
ii. how distinctive the earlier mark is, andiii. the degree of similarity between the respective
goods or services.
Rules of comparison as developed over the years
and as laid down Parker J. in Pianotist case should
continue to be followed- (1906) 23 RPC 774 page
777.
“You must take the two words, you must judge
them by the look and by the sound, you must
consider the goods to which they are to be applied,the nature and kind of customer who would be
likely to buy the goods.
Consider all thesurrounding circumstances, as to what is likely tohappen if each of those trademarks is used in thenormal way as a trade mark for the goods, therespective owners of the mark. If there is likely to
be confusion, the application must be refused.”
General rules for comparison of marks
The general well settled principles for comparison Cadilaof trademarks are:Healthcare
 The trademark must be considered as a whole. Limited vs.
It is not right to take a part of the trademark and Cadila
Pharmaceuticalcompare it with part of the other trademark
Limited(AIR No meticulous or letter by letter comparison is2001) SCrequired. side by side comparison is not the1952,
correct test
 Comparison should be made from the point ofview of a person of average intelligence and ofimperfect recollection
 The overall structural, visual & phonetic
similarity and similarity of the idea in the twomarks and the fact as to whether it is reasonable
likelihood to cause confusion should be taken
into account.
Additional precautions required where the goods
are medicinal preparations“Exacting judicial scrutiny is required if there is a
Page | 45

possibility of confusion over marks on medicinal
products because the potential harm may be far
more dire than that in a confusion over ordinary
consumer products”
Where composite tradedifferent distinctive elementmarkcomprises

In the case of composite marks comprised of two or
more distinctive elements, it will often be difficult
to determine that any one of those elements isdominant. For example in ‘Alexander Morgan’,
where both elements contribute roughly equally tothe origin identification message sent by thecomposite sign, which therefore depends upon thepresence of both elements. Accordingly, the view isthat the all the marks consisting of ‘Alexander’ or‘Morgan’ will not be conflicting with the markcomprised of the full name, even if the respective
goods are the same. The same principle isrecognized in Section 17(1) of the Act which enacts
that the mark must be considered as a whole.
However if prominent and distinctive portion of a
two trademarks are identical, earlier mark may be
regarded as conflicting with later mark. For
example CROCIN PLUS may be conflicting with
CROCIN FORTE for medicines.
It is possible for a word to be subsumed within amultiple slogan mark even though the words do not
combine to form a totality with an obvious
meaning. For example, it would be difficult to saythat the word ‘targets’ has an independent anddistinctive role in the composite mark ‘Fashion
Week Targets Friday’ (for clothing). Consequently,
it is not likely that it would be held to be in conflictwith the mark ‘Targets’ (again assuming same
goods) because it is not the dominant element ofthat mark, and neither is it an independent anddistinctive element of the composite mark.
Accordingly the trademark ‘targets’ should not becited as conflicting with the trademark ‘Fashion
Week Targets Friday’ (for clothing).
In a different case e.g. the mark CAREAID is
included in a two word composite mark such as
SPINESPAN CAREAID (for medical services)where the two elements would appear to theconsumer to be a) normally distinctive, and b)
entirely independent of each other. If the respective
goods/services are also identical, it is quite likelythat the relevant consumer will assume that the
Page | 46

inclusion of the CAREAID mark as an element in
the composite mark SPINESPAN CAREAID isindicative of an economic connection between theundertakings using the marks. A section 11(1)objection would therefore be justified if the marks
are in different ownership.
11.3

OfficeactionIn case, same or similar earlier trademarks ofdifferent persons are found on records in respect ofsame or similar description of goods or services,
the Examiner should raise objection as followsThe trademark applied for registration is notregistrable under Section 11(1) of the Trade Marks
Act 1999 since identical or similar marks in respectof identical or similar description of goods orservices are there on records and because of such
identity or similarity of marks and goods orservices there exists a likelihood of confusion on
the part of the public.

12

Examination of application as to absolute grounds
for refusal of application for registration

12.1

OfficeactionThe examiner shall examine the application to see
as to whether the trademark applied for registration
is capable of distinguishing goods or services of
one person from those of other and its registration
is liable to be refused registration under Section 9of the Trade Marks Act 1999

12.2.1

Concept

Section 9(1) of the Act sets down the following
absolute grounds for refusal of registration,according to it,a) trademarks which are devoid of any distinctive
character; that is to say, not capable ofdistinguishing the goods or services of one
person from those of another person;b) trademarks which consist exclusively of marks
or indications which may serve in trade, todesignate the kind, quality, quantity, intended
purpose, value, geographical origin ,or the timeof production of goods or of rendering ofservices, or other characteristics of goods orservice,c) trademarks which consist exclusively of marks
or indications which have become customary inthe current language or in the bona fide andestablished practices of the trade:
Devoid of distinctive character“The expression ‘distinctive’ in relation to goods inPage | 47

respect of which a trademark is proposed to beregistered means adopted to distinguish goods, withwhich the proprietor of trademark is or may beconnected in the course of trade, from goods in caseof which no connection subsists.”“Distinctiveness has been understood to mean somequality in the trademark which earmarks the goods
so marked as distinct from those of others”
In the 1999 Act ‘distinctive’ & ‘capable ofdistinguishing’ have been made synonymous. It
means a trademark which is inherently distinctiveor which has become capable of distinguishinggoods/service of applicants from those of others,
can be considered for registration.
A mark which has a direct reference to theCharacter or quality of the goods/service isconsidered as inherently not capable ofdistinguishing. If the mark consists of common
surname, name, name of place, section of society,common geometrical devices, etc are not regarded
as Capable of distinguishing the goods or services.
The fundamental principle is that “traders should
not obtain any monopoly in the use of words as
trademarks to the detriment of the members of the
public, who, in the future and in connection with
their goods might desire to use them”.
Under Section 9(1)(b) trademarks which consist
exclusively of marks or indications which may
serve in trade to designate the kind, quality,
quantity, intended purpose, values, geographicalorigin or the time of production of the goods orrendering of the service or other characteristics ofthe goods or services” shall not be registered.
The expression “may serve in trade” means that
there exists a reasonable likelihood that otherhonest traders will wish to use the mark in question
to designate characteristics of the goods/services.
‘kind”The expression “kind” would include the name of
the goods or services claimed and any words
recognized as indicating size or type, such as “old”,“new” “Extra large” or “Large” or “Small”
would fall in this category and as suchobjectionable in respect of any goods or service.
“Quality”
Laudatory words such as GOOD or BEST are notPage | 48

registerable for any goods or services since all
traders should be equally free to use them in thecourse of advertising their products.
“Quantity”
Numeral 12 would not, for e.g. be acceptable forwine (12 bottles = one case of wine) or 20 or
numeral 200 as a pack of cigarettes. Similarly,“1000” would not be acceptable for butter (1000gm – 1 Kg)"Intended purpose"
Words which refer directly to the use to which thegoods are put or which describe the consequencesof providing the service are not acceptable.
Examples are: KETTLE CLEAN for preparations
for cleaning kettles; TWIST AND CURL for hand
implements operated by a twisting action for
curling the hair; SLIM AND FIT for slimming
preparations. Words which describe the effect of
the goods / services would also be open to objection
as a characteristic of the goods /services, forexample RUSTFREE for paints; and articles madeof steel.
"Value"Words or symbols which merely serve to indicate
the worth merit or importance of the goods orservices are not acceptable. Examples are "TWOFOR ONE; WORTH THEIR WEIGHT IN GOLD.
"Geographical origin"
Name of places with populations of less than 5000
in India will prima facie be acceptable. However if
the location covers a large area having a reputationin respect of the goods or service, the application
may attract objections.
 In the case of overseas names, the location isconsidered more important than size.
 In the case of Industrialized countries such as
U.S.A., Japan, or Europe, while population sizeof 100,000 is considered reasonable for
acceptability, it is to be borne in mind if thelocation has reputation for the type of goods orservices, the size of the location or its
remoteness will not help acceptability of thegeographical name as a trademark.
 Name of rivers, mountains, seas, lakes, etc will
be considered prima facie acceptable in respectof goods, not associated with the geographicalfeature. For example, in respect of “fish” inPage | 49

class 29 the names of rivers or seas will not be
acceptable.
“Mediterranean” for transport services may beobjectionable. Likewise names of mountains in
respect of agricultural produce will beconsidered non-distinctive.
 Names of streets such as Wall street, Dalal
street which have strong links with financial
services such as stocks and investments willentail objections in respect of such services orrelated goods.
where there are more than one person
manufacturing the same goods in a place , the nameof that place will be incapable of acquiring a
distinctive character as a trademark[55 RPC 253,
page 260(HL)]
Geographical names used fancifully
Geographical names, used in a fanciful manner,such as NORTH POLE or MOUNT EVEREST for
bananas, which are not likely to be taken as
Indicating the origin of the goods, can be accepted.
Names of rivers, seas & deserts etc.
The names of rivers, seas, lakes and mountains etc.
are usually accepted prima-facie for goods which
are not associated with these geographical features.
However, “Ganga” or “Kaveri”, the name of rivers,
which are also better known personal names, can beregistered only on the basis of acquired
distinctiveness. Names of rivers, seas and lakes
would not normally be acceptable as marks for fish
or fish products. The names of mountains would
not be acceptable as marks for agricultural produce.
Some rivers flow through heavily industrialized
areas and they would not be acceptable , forexample, "Treated with Ganges water " is a
Common expression. As regards oceans, thepractice is to accept ATLANTIC and PACIFIC, forgoods / services which are not directly relevant, andused in a fanciful manner. In the case of deserts,
reputation is a factor to be taken into account.SAHARA would not be accepted for dates, nor'Surat' and Kalahari" for diamonds.
In respect of natural produce, population figures are
not as reliable a guide to acceptability. Natural
produce would include fresh vegetables, fruits,
eggs, milk, cream, water and minerals but notprocessed foods or beverages.
Where the geographical location covers a large area(even if sparsely populated) and/or has a reputationin the goods, the application will face an objection.
Page | 50

The names of streets & roads
These are generally acceptable unless thegeographical name is associated with thegoods/service. For example, DALAL STREET
which is well-known for stock market would not be
acceptable for Stock Market Services, nor names of
popular roads for a wide range of consumer goods.
Well known names of foreign streets, roads etc aresimilarly dealt with:
2"d avenue etc is almost be on par with Dalal street
for fashion goods and Wall Street for example
would be objectionable for services connected withstocks and shares or investments.
Names of Districts
Generally, the districts carry the name of
Headquarters of concerned town/city, and as use ofsuch names will attract the same objections
applicable to geographical locations. Acceptance ofsuch names will depend upon the extent of
reputation of the place for such goods /services.
Names of suburbs of big cities
In India many suburbs of Mumbai such as Andheri,
Borivali or Bhendi Bazar etc., are as large and wellknown as many towns. They should be considered
as a town per se with comparable population
figures. In the case of an application to register thename of a district of Mumbai, Examiners should
consider whether the name is likely to be seen as
fanciful use of the name or as a plausible indicationof geographical origin.
In deciding whether the name is likely to be seen as
fanciful examiners should considera) Whether the goods/services are likely to begenerally sold/provided from the area
concerned; and if so;b) Whether the use of such name in relation to thegoods/services are likely to indicate the originof goods/services.
Towns with company names
In rare instances, applicants may be able to showthat they established their business at a particularlocation and that subsequently a town grew up
around the business and adopted the same name.
Any reputation which the town has in respect of the
products concerned originates from the business. In
such cases prima facie acceptance is normallypossible for such goods. For example
TATANAGAR for steel.
Page | 51

Different approach for service marks consistingof geographical names
Goods are almost invariably transported from thearea and sold elsewhere in India, whereas a service
may be provided generally in a particular locality.
Accordingly, while geographical limitations will
not usually overcome objections under Section
9(1)(b) in respect of goods in the case of service
marks, there could be a more liberal approach.
Two or more Indian geographical names
combined
Where a combination of two or more Indian
geographical names refers to particular region, thiswill be prima facie objectionable for registration asa trademark.
For
exampleVasai-Virarfor‘buildingconstructions’
Where the combination of locations does have areputation e.g. MUMBAI - PUNE for "information
technology or financial services", objection will beraised.
Foreign geographical names
Regardless of population size or type of service,these must be considered on the basis of facts as towhether the name of the location has a reputation
for the service and whether other traders with abusiness in India are reasonably likely to wish to
use the name to indicate the geographical origin orother characteristics of their own such services. In
many cases the use of foreign geographic locations
as trademarks for services would be fanciful, e.g.
KARACHI for "shoe repairs"; as would KANSASFRIED CHICKEN for restaurant services.
Prima facie objections would arise if the name ofthe place has a connection or reputation for theservice claimed e .g. PARIS for fashion design",
MADRAS for "Masala Dosa" or "Italian" forrestaurant services (indicates type of food served).
12.2.2Concept

Prohibition of registration of geographical indication
as trademark:Section 25 of the GI Act prohibits registration of“geographical indication” as trademark or
invalidate the registration of a trademark either suo
moto or at the request of an interested party. The
basic intention of section 25 is to prevent
misappropriation of a public property in the natureof a GI by an individual as a trademark leading toPage | 52

confusion in the market. Section 26 of the GI Act,however, protects the trademark consisting of a
Geographical Indication which has been applied foror registered in good faith before thecommencement of the GI Act.
12.2.3

Concept

Section 9(1) (c) of the Act applies where the markconsists of a word which has become customary inthe current language or in the bona fide andestablished practices of the trade. The expression“trade” means the “trade” which is concerned withthe goods or services covered by the application.
When a mark is in common use in the trade orwhen it is open to the trade to use the mark is said
to be ‘common to trade’ and it ceases to be atrademark of a single source. Marks falling in thiscategory include, for example, simple devices offlowers or their names for ‘agarbathis’; devices ofgrapes for wines, star devices for brandy, tobacco
products etc.
Before an objection is taken under Section 9(1) (c)it is necessary to be satisfied about sufficient use of
the mark by third parties prior to the date of theapplication being examined.

12.2.4

Concept

Acquired distinctivenessA trademark which offends against Section 9(1) of
the Act may still be registered if it can be shownthat on the date of application the mark has in fact
acquired a distinctive character as a result of the use
made of it.
Evidence of use
In any proceeding before the Registrar, evidence is
to be given by way of an affidavit. However theRegistrar may, if he thinks fit, take oral evidence inlieu of, or in addition to, such evidence by affidavit.
Rule 116 prescribes the manner in which theaffidavits are to be executed. In case Evidence ofuse of the trademark in conformity with userstatement mentioned in the application has alreadybeen given by way of affidavit (with exhibits) of
the applicant, the examiner may take this into
account while raising objections under Section 9(1)of the Act.
In assessing the distinctive character of a mark in
respect of which registration has been applied for,on the basis of evidence of use provided by theapplicant, the following factors shall be taken into
Page | 53

account:a) the market share held by the mark;b) how intensive, geographically widespread andlong-standing the use of the mark has been;c) the amount invested by the undertaking inpromoting the mark;d) the proportion of the relevant class of persons
who, because of the mark, identify goods as
originating from a particular undertaking;e) statements from Chambers of Commerce andIndustry or other trade and professional
associations”.
12.2.5

Concept

Distinctiveness in various types of trademarks

Letters and numerals
Marks consisting of single letters or two letters will
be generally regarded as “devoid of distinctive
character” for goods because of tendency in trade touse letters as models or catalogue references,
further these may be used as abbreviation of names.
Two letter marks may be acceptable in respect ofservices having regard to the trade practice.
Single numbers which involve little or no
stylization will often face an objection because
many such numbers are used in trade to designate aquantity, quality or characteristic of many goods(e.g. 6 = cylinders in an engine, 2 = liters of milk)similarly two digit numerals may be devoid of any
distinctive character because they are commonlyused in trade as descriptions
Numbers/letters which may be used in trade to
designate: the date of production of goods/provision ofservices (e.g. 1996, 2000)
 size, e.g. XL for clothes, 1600 for cars, 34R for
clothing, 185/65 for tyres quantity, 200 for cigarettes
 dates e.g. 1066 for history books, 1996 forwines
 telephone codes e.g. 0800 or 0500
 the time of provision of services, e.g. 8 – 10,
24/7
 the power of goods, e.g. 115 (BHP) for engines
or cars or speed, e.g. 486, 586, 686 & 266, 333, 500, 550
for computers strength e.g. "8.5%" for lager
Such marks will be subject to objection under
Section 9(1)(b) and 9(1)(c) of the Act.
Page | 54

Common names/surnames
Marks consisting of a common name or surname or
the name of a particular section of citizens of India
are prima facie regarded as not capable ofdistinguishing goods/services, as persons with thatname/surname or persons connected with that groupor community may use that name in course of the
trade since Section 35 of the Trademarks Act 1999
protects bona fide use of name, address &description of goods or services.
Objections under Section 9(1) (a) should be raisedin case of marks consisting of a common name orsurname or the name of a particular section of
citizens of India, unless it is established that hemark has acquired distinctive character by prioruse.
Mis-spelling of descriptive words
Mis-spellings of descriptive words are also
excluded from registration and objections should beraised as and if correct word was objectionable,
such asXTRA instead of EXTRA; KOMMUNIKATION
instead of COMMUNICATION.
Where mis-spellings or abbreviations arecommonly used in the trade, the marks would still
be open to objection.
For example :CUT ‘N BLOW DRY for hairdressing.
DRIVE THRU /DRIVE IN for restaurant services.
STARTER PAK for beginner packages.
FRESHLY PREPARED 2 GO for takeaway pizzas.
BEST 4 YOU
Descriptive words in foreign languages/little
known languages
If the foreign word is in a language that is not likely
to be known to a significant proportion of the
public in India, there will not exist, any ground for
objection that the mark is descriptive. However if aword is descriptive in local language of the Indian
applicant, the objection under Section 9 must be
raised since the goods would be sold/services
would be rendered in that locality.
Domain names
A domain name is a written representation of a
website address, e.g. www.ipindia.nic.in, It is
common practice amongst traders to have theirPage | 55

website address and use the same in respect of theirgoods/services as trade name. In other words thedomain name is being used as a trade name ortrademark, and the Registrar will, subject to theusual criteria of the Act, permit domain names to beregistered as trademarks if otherwise registerable.
Elements of the domain name such as ".com" or"co.in" are considered to be totally non-distinctive,
much in the same way as "Ltd" and "Plc". As ageneral rule, the examiner should consider whether
the remainder of the mark is descriptive or nondistinctive; if so, there will be an objection under
Section 9.
Trademarks consisting of a number of features
each of which is non-distinctive
When a trademark consists of several matters, its
registration shall confer on the proprietor exclusive
right to the use of the trademark taken as a whole. If
the combination of descriptive elements was
unusual and created an impression that was
sufficiently far removed from being simply acomposite description of the goods/services, thetrademark might be registrable. Again if the mark is
constituted by purely descriptive phrase (e.g. HIGHTECH HOME COMPUTING SYSTEM forcomputer software) it would not be permitted
registration.
Slogans
One or more words, constituted as a slogan markmay be registrable provided it is distinctive per seor has acquired distinctiveness. ‘Slogans’ serving a
promotional function will be objectionable because
average consumers are not in the habit of making
assumptions about the origin of products on thebasis of such slogans. Plain descriptive phrase of aslogan is always considered non-distinctive. Like
NEVER CLEAN YOUR SHOWER AGAIN (Class3) is to be objected because it describes in plain
language the intended purpose of the goods. The
mark “THE BEST WAY TO PREDICT THE
FUTURE IS TO CREATE IT” (for technology
related services in classes 35, 38 & 42) can be
accepted because this is not considered to be anormal way of designating these services nor to be
a commonplace phrase.
Combination of colours
If a statement has been made in the application thatthe trademark consists of combination of colours
Page | 56

only, the trademark will be regarded as colour
trademark.
If a particular combination of colours of packaging
has become distinctive, in fact, as indicating thegoods of a particular trader, there is no reason why
it should not be protected by registration. It isconceivable that extensive use of two colours inmany different arrangements may result in thecolour combination per se becoming distinctive of
the applicants' goods
Marks consisting of a single colour will usually beliable to objection under Section 9(1)(a) of the Act
because they inherently lack the capacity to
distinguish.
Wherever the exclusive right to color is sought,
weighty evidence should be necessary to overcome
objection under Section 9(1)(a) of the Act.
Sound marks
A trademark may consist of a sound andrepresented graphically by a series of musical notes
with or without words. Applications for soundmarks must clearly state that they are sound marks.
Otherwise the application will be examined as if itwere a word and/or device mark (e.g. in the case ofmusical notation).
The acceptability of a sound mark must, like words
or other types of trademarks, depend upon whether
the sound is or has become a distinctive sign; that iswhether the average consumer will perceive thesound as meaning that the goods or services are
exclusively associated with one undertaking.
Prima facie, no sound marks will qualify for
acceptancewithout
evidenceoffactualdistinctiveness.
12.2.6

Concept

Section 9(2) prohibits registration of a trademark–a) if the mark is of such nature as to deceive thepublic or cause confusionb) if it contains or comprises any matter likely tohurt the religious susceptibilities of any class or
section of the citizens of India.
c) if it comprises or contains scandalous orobscene mattersd) if its use is prohibited under the Emblems andNames (Prevention of Improper use) Act, 1950

Page | 57

Deceptive marks
An objection under Section 9(2) (a) to theregistration of a mark will only be raised if there is
any real potential for deception of the public.
Section 9(2)(a) is primarily concerned with thedeceptive nature of the mark by reason ofsomething inherent in the mark itself or in its use,such as to nature, quality or geographical origin of
the goods or services. The mark may be in thenature of misrepresentation as to the characteristicsof the goods or services or to the effect that they
were made in a specified geographical region orplace when in fact not so made.
Deceptive use may also arise where the markcontains misleading indication (such as the use of
the word “registered” when the mark is notregistered) or marks which are used in a fraudulent
trade.
objections under this Section at first examination
stage should be taken where there is prima facie
misrepresentation as to “nature or quality ofgoods/services, geographical origin” etc:
It is not necessary to raise an objection to the markwhere there is no realistic possibility of deception.
For example, there would be no objection against
HARTLEY'S STRAWBERRY JAM for “jam”; anapplication to register such a trademark for "jams"
will not be regarded as a “misrepresentation." Theapplicant will be required as a condition ofregistration to use the mark only on or he will be
required to agree to a Variation Condition which
may be imposed by the Registrar so that the nameof the actual product in respect of which the mark isused will be required to be substituted for words
STRAWBERRY JAM
However, if in response to an objection under
Section 9(2) of the Act an applicant seeks to
exclude goods or services from the specification,
the Examiner shall reconsider whether the mark has
now become free from objection of such a nature as
to deceive the public.
Deception as to Quality
For example application for registration of
ORLWOOLA for "suits", is objectionable under
this Section if it is used in respect of non woolensuits, because the public would expect the goods tobe made of all wools and to pay more for suits
containing wool. If the trademark is to be used in
respect of woolen suits it is descriptive u/s 9(1)(b)Page | 58

Deception as to Geographical origin
Objections under this Section shall be taken at
examination stage to place names or figurative
marks indicating geographical origin where thegoods in fact do not originate from thatgeographical area. For example PIAZZA D'ITALIA for "clothing", is indicative of the goods
being from Italy. The public would be deceived if
the goods were not manufactured in Italy. In suchcases, objections would be raised.
So also SWISSTEX for "watches", because
Switzerland is famous for high quality watches.
Geographical names appearing in trademarks forwines and spirits, not originating from such place
would amount to deceptive use. E.g. word
SCOTCH for whisky, not produced in Scotland
should be refused as it involves misleading allusion.
From the above it would be clear that the generalrule is that mis-statement of any material factcalculated to deceive the public will be sufficient toconstitute an objection under section 9(2)(a) of the
Act and unless the objection is remedied , theapplication will be refused.
Practice regarding Olympic Symbol or Word
The Olympic Symbol, the Olympic Motto and thewords Olympic(s), Olympian(s) and Olympiad(s)are not to be registered as trademarks except under
the authority of the Olympic Committee.
Protection extends to marks which are sufficiently
similar to the Olympic Symbol or the Olympic
Motto as are likely to create in the public mind an
association with those signs.
Where an application is made consisting of orcontaining the Olympic symbol or words. Objection
under Section 9(1)(a) of the Trademarks Act.
Should be raised.
Marks likely to hurt religious susceptibilities Under this Section a mark is prohibited forregistration as a trademark if it contains orcomprises of any matter likely to hurt the religious
susceptibilities of any class or section of thecitizens of India.
It is to be noted that it is a common trade practice inIndia to use names and pictures of Gods andGoddesses or religious symbols as trademark.
Accordingly such use per se is not regarded bypublic as offending religious sentiments of any
Page | 59

class or section of public. However, such use inrelation to certain goods may offend the religious
sentiments of the people. For Example, use ofnames/device of deities or religious heads on
footwear will be considered distasteful and will be
open to objection. Similarly use of Hindu Gods inrespect of Beef or meat products or use of names ofMuslim saints for pork products would offend thereligious feeling of respective sections of the public
to attract the objection under this Section. Certain
names and pictures of God and Goddess and also
religious heads are prohibited from being registeredas trademarks in terms of directions issued by theCentral Government under section 23(1) of theTrade & Merchandise Marks Act, 1958. These
directions continue to remain valid.
Use of religious symbols (like OM) or names (e.g.
Jesus) as trademarks is likely to undermine/offend
religious value and sentiments. Names ofGods/Goddesses which are also used as personalnames may be considered as personal names forregistration purpose, unless accompanied by thedevice of such God/Goddess
Mark containing scandalous or obscene matterThe Act prohibits registration as a trademark if themark “comprises or contains scandalous or obscenematter”.
Scandalous marks are those likely to offend
accepted principles of morality. A mark which onits face appears to be offensive shall be refused. In
this category will fall marks which could induce
public disorder, or incite the criminal or otheroffensive behaviour.
The applicability of the objection must be decided
objectively and non-discriminately.
If a mark is merely distasteful an objection under
Section 9(2) (c) is unlikely to be justified whereas if
it would cause outrage or would be likely
significantly to undermine religious, family orsocial values then an objection must be raised.
The outrage must be amongst an identifiablesection of the public.
In order to make this assessment, the Examiner
must be objective, not subjective. Objectivity
means being neither out of date nor a trend setter;
not setting some kind of moral standard but also not
being insensitive to public opinion.
A vulgar mark not may be acceptable on any goods
Page | 60

or services and similarly racially offensive markwill face a blanket objection, regardless of thegoods and services. Where an obscene or crude
mark is concerned, an objection will be certain
where the goods or services are primarily or equally
aimed at children, such as toys, games,
confectionery, soft drinks etc. For goods intended
for adults such as alcohol and contraception there
may be less cause for concern.
Objections should be raised against explicit full
frontal nudes and offensive (scandalous) backviews.
Each case must be decided on its own facts. The
dividing line is to be drawn between the markwhich amounts only to dis-taste and the mark which
would justifiably cause outrage or would be thesubject of justifiable censure as being likely toundermine current religious, family or social
values.
Examples of marks which may considered to be
objectionable under this Section –WHITE DOVE YOU DON’T NEED WINGS TO FLY

Contrary to public policy as it would be seen as
promoting drugs (White Dove is a nickname for a
type of drug)
SNUFF MOVIESObscene and scandalous, promoting pornography
and murder.
This is contrary to accepted principles of morality
in view of bad language.
Prohibition under Emblems and Names (Preventionof Improper Use) Act, 1950-

Section 9(2) (d) bars registration as a trademark if“its use is prohibited under the Emblems andNames (Prevention of Improper Use) Act, 1950 (12of 1950).
Section 4(b) of the Emblems Act prohibits
generally registration as trademark or design whichbears any emblem or name the use of which is incontravention of section 3 of the Emblems Act. The
prohibited name or emblem is specified in theschedule to the said Act. Under section 8 theCentral Govt. is empowered to add or alter theschedule. The full text of the schedule must be seen
to confirm whether the name or emblems falls
within the prohibition. The schedule inter alia
contains the name or emblems or official seal of theUNO, WHO, Govt. of India or any State
Page | 61Government or of a department of any Governmentor the President, or Union of India.
Item 7 of the Schedule expressly includes “anyname which may suggest or may calculate tosuggest –i. Patronage of the Govt. of India or Governmentof a State
ii. Connection with any local authorities or any
corporation or body constituted by theGovernment under any law for the time being inforce.
Certain guidelines under Item 7 have been issued
by the Central Government, in terms of which
registration of any name is prohibited under the
Emblems Act, if :1. it is identical with the name of any
society/corporation or local body which has
been set up by the Govt. of India or State Govt.
under any law for the time being inforce;
2. it gives the impression of the patronage ofCentral Government or State Government. For
example, Indian Council of Agricultural
Research (ICAR) is a registered body under the
Ministry of Agriculture and Co-operation. Any
name beginning with the words “Indian Councilof” may mislead the public that it is patronizedby the Government.
3. It too nearly resembles a name of body
corporation or local authority set up by
Government under any law for the time being inforce. For example, ‘Indian Institute of Mass
Communication’ is an autonomous body under
Ministry of Communication. Names like
Institute of Mass Communication may give theimpression and the said society is also
patronized by the Central Government.
The Central Government has issued directions not toregister following trademarks.

These trademarks are therefore not registrable inview of Section 23 (1) of the Trademarks Act, 1999
1. Words “UNITED NATIONS”, letters “UNO”
and the official Seal and Emblem of UNO.
2. The device of an arrow on the ground that is theproperty of the Government of India.
3. Letters “N.C.L.”.
4. Letters “I.S.I.” if applied by any person or bodyother than the Indian Standards Institution.
5. Letters “I.C.S.”,6. Letters “N.P.L.”
Page | 62

7. Words “ASHOK CHAKRA” or DHARMACHAKRA” or the device of Asoka Chakra or
any other colourable limitation thereof.
8. The British Royal Arms, The British Crown or
the Union jack or any colourable limitation
thereof.
9. Letters “I.S.O.” if applied by any person or
body other than the Indian Standards Institution.
10. Words “Lord Buddha” or the device of Lord
Buddha or any colourable imitation thereof.
11. Words “Shree Sai Baba” or the device of Shree
Sai Baba or any colourable imitation thereof.
12. Words “Sri Ramkrishna, Swami Vivekananda,
the Holy Mother alias Sri Sarada Devi or thedevicesofSriRamkrishna,
Swami
Vivekananda, the Holy Mother alias Sri Sarada
Devi and the Emblems of the Ramkrishna Mathand Mission or colourable imitation thereof.
13. Words “National”, and “Panchsheel”,
14. Following common names for pesticides:ALDRIN DINEXALLETHRIN DINOSAMBHC NEODGAMMA-BHC MAZIDOXCHLORDANE MIPAFOXCHLOROBENZILATE CHLORFENSON
PP-DDT CHLORPROPHAM
DDT DINOPROPDIAZINON DNOCDIELDRIN ENDRINDNC FENSONHEPTACHLOR HHND
HETHOXYCHLOR LINDANEPARATHION WARFARINSCHRADAN ATRATONTOXAPHENE AZINPHOS-ETHYLFERBAM AZINPHOS-METHYLTHIRAM DAZOMETZINEB DIMETHOATE
2,4,D FENOPROP
2,4,5- T FENTHIONMCPA MECARBAM
PROPHAM MEVINPHOSANTU MORPHOTHION
MALATHION PARAQUATCHLORBENSIDE*[ Coumachlor dichlone
 dimefox
 dinoseb
Page | 63











maneb
nabam
parathion-methyl
Proxan-Na or proxan-sodium
Tecnazene
TEPP
ziram
Captansulfotep]

15. Letters “IR”
16. Names and pictures of Sikh Gurus, viz. Guru
Nanak, guru Angad, Guru Amar das, Guru Ram
Das, Guru Arjun dev, Guru Hargobind, guru
Har Raj, Guru Har Krishnan, Guru Teg Bahadur
and Guru Govind Singh
17. Name and picture of Chhatrapati Shivaji
Maharaj
18. Letters “STC”.
19. Name and/or picture of the deity of Lord
Venkateswara and/or Balaji
20. Representation of the Election Symbol of any
political party in India.
Practice with regard to Red Cross

Marks consisting of words “Red Cross” or “Geneva
Cross” or any cross device in red or in any closely
resembling colour is not accepted for registration –However, applications made in black and white,which contain the device of a cross, or a crescentmoon or lion and sun, will not attract objection.
Green crosses on a white background are genericfor pharmacy and medical goods and services. Useof such emblems as trades mark is not to bepermitted.
White crosses on green backgrounds are generic forfirst aid goods and services, and are based on
European Union legislation establishing a whitecross on a green background as the First Aid sign.
Objection must be raised for registration of suchdevices as trademarks
In respect of mark generally consisting of crossdevice, applicant is required to comply with thecondition not to use the cross device in red or inany similar colour, or in the manner prohibited
under the Geneva Convention Act, 1960

Page | 64

12.2.6

Concept

Under Section 9 (3) a mark is not registrable as atrade mark if it consists exclusively of –a) the shape of goods which results from thenature of the goods themselves; orb) the shape of goods which is necessary to obtaina technical result; orc) the shape which gives substantial value to thegoods.
It provides an explanation which reads as‘For the purposes of this section, the nature ofgoods or services in relation to which the trade
mark is used or proposed to be used shall not be aground for refusal of registration.’
Shape of goods
A distinctive shape of goods or its packaging or any
three dimensional object capable of being
represented graphically, can be a trademark andapplication for registration of the same can be filed.
However the trademark shall not be registered if itconsists exclusively of –a) the shape of goods which results from the natureof goods themselves; orb) the shape of goods which is necessary to obtain atechnical result ; orc) the shape of goods, which gives substantial value
to the goods
The purpose of Section 9(3) (a) is to keep free,basic shapes of goods that should be available foruse by the public.
Shape necessary to obtain a technical result
This sub-clause prohibits registration as atrademark where the shape of goods is necessary toobtain a technical result. In this connection thissubsection must be interpreted to mean that a markconsisting exclusively of the shape of a product is
not registrable by virtue thereof if it is establishedthat the essential functional features of that shape
are attributable only to the technical result. This
does not automatically mean that a shape is notregistrable even when all its features serve somefunctional purpose. If it can be shown that anessential feature (which may include the overall
impact arising from the way the individual features
are arranged) is not only attributable to a technicalresult, i.e. the shape is not one which would be
adopted for its functional efficiency, it will not becaught by section 9(3)(b). Shapes which do consist
Page | 65

exclusively of functional features attributable only
to the technical result will be open to objections
under Section 9(3)(b); marks in this category are
deemed to be incapable of acquiring a distinctive
character and therefore the filing of evidence will
not overcome the objection.
Shape which gives substantive value to the goods
This subsection deals with shapes which add
substantial value to the goods, disregarding themain function attributable to a trademark i.e. source
identification function.
‘Whilst the legal test for distinctiveness is the samefor shape marks as for other marks, recognition
must be given to the differing perceptions of theaverage consumer in relation to non-traditional
trademarks. In particular, the average consumer
may not as readily accept the appearance of thegoods themselves as an indication of trade origin.
This is because “average consumers are not in the
habit of making assumptions about the origin of the
products on the basis of their shape or the shape of
their packaging in the absence of any graphic orword element’
The more closely the shape for which registration issought resembles the shape most likely to be takenby the product in question, the greater the
likelihood of the shape being devoid of any
distinctive character.
the shape of packaging is to be treated as the shapeof the goods themselves where the goods are tradedin packaged form, for reasons associated with thenature of the goods; for example, beverages,
cleaning fluids etc.
12.2.7

Concept

Prohibition of registration of names of chemicalelements or international Non-Proprietary Names

Section 13

Under Section 13, the registration of a word as atrademark, which is commonly used and acceptedname of any single chemical element or compoundin respect of chemical substances or preparation isprohibited. Also the law prohibits registration of aword which is declared by the World HealthOrganization (WHO) and notified by the Registrar
as international non-proprietary name, or which is
deceptively similar to such name.
This will mean that not only a word which isdeclared to be non-proprietary by WHO but also
any word which is deceptively similar to such word
Page | 66

is prohibited from registration
For example word CYLOVIR was refused, as being
confusingly similar to the non-proprietary name
ACYCLOVIRIt should be noted that such prohibition is only inrespect of chemical element or compound and does
not extend to other goods. For example, the word
“Radium” may be registered in respect ofreadymade garments or any services.
13

13.1

Draft for communication of objections to acceptanceof application for registration, which are liable to berefused on absolute grounds

OfficeactionThe Examiner shall communicate objections to Rule 38
acceptance of application for registration, which are
liable to be refused on absolute grounds, as for as it
is applicable to the case, as followsThe mark applied for registration is liable to berefused registration under S 9(1)(a) of the Trade
Marks Act 1999, as it is devoid of any distinctive
character, that is to say, not capable ofdistinguishing the goods or services of one personfrom those of another person because it is acommon surname/personal name/…;
The mark applied for registration is liable to berefused registration under S 9(1)(b) of the Trade
Marks Act 1999, as it consists exclusively of words
or indications which may serve in trade to
designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of
production of the goods or rendering of the service
or other characteristics of the goods or service;
The mark applied for registration is liable to berefused registration under S 9(1)(c) of the Trade
Marks Act 1999, as it consists exclusively of words
or indications which have become customary in thecurrent language or in the bona fide andestablished practices of the trade,
The mark applied for registration is liable to berefused registration under S 9(2) of the Trade
Marks Act 1999, as
it is likely to deceive the public or cause confusionin the mind of public; orit contains or comprises of any matter likely to hurt
the religious susceptibilities of any class or sectionof the citizens of India; or
it comprises or contains scandalous or obscene
Page | 67

matter;
its use is prohibited under the Emblems and Names(Prevention of Improper Use) Act, 1950 (12 of1950, or.
The mark applied for registration is prohibited
under the Central Government Instructions issued
under Section 23(1) of the Trade Marks Act 1999
The mark applied for registration is liable to berefused registration under S 9(3) of the Trade
Marks Act 1999, as it
it consists exclusively of the shape of goods which
results from the nature of the goods themselves; orthe shape of goods which is necessary to obtain atechnical result; ;orthe shape which gives substantial value to thegoods
The mark applied for registration is liable to berefused registration under S 13 of the Trade Marks
Act 1999, as it is in respect of chemical substanceor chemical preparation and
it is name of a chemical element or compound; or
it is a word similar to the name of a chemicalelement or compound; or
it is word which is declared as international nonproprietary name; or
it is a word similar to an international nonproprietary name.
14

Examination of series marks

14.1

OfficeactionIn case an application has been filed on forms TM8 or TM-37 for registration of a series oftrademarks in a single application, the Examiner
shall examine the application under Section 15 of
the Trade Marks Act 1999

14.2

Concept

Series marks

Section 15(3)Where a person claiming to be the proprietor ofseveral trademarks in respect of the same goods orservices which, while substantially resembling witheach other in the material particulars thereof, yetdiffer in respect of matter of a non-distinctive
character which does not substantially affect theidentity of the trademark; seeks to register those
trademarks, they may be registered as a series in
one registration.
Where a group of marks are applied for registration
as series in one registration and the examiner does
not consider any or some of them eligible forPage | 68

registration as series marks under section 15, anobjection to this effect will be raised in theexamination report and the applicant will be
required to delete such marks from the group.
For example trademarks RIN-1, RIN-2, RIN-3 may
be accepted as series trademarks. However
trademarks SUPER RIN or RIN PLUS may not be
accepted as series trademarks if applied withtrademarks RIN-1, RIN-2, RIN-3.
14.3

OfficeactionThe Examiner shall communicate objections to
acceptance of application for series marks, as
followsThe trademarks xxx yyy applied for registration asseries marks don’t resemble with other remaining
trademark(s) aaa bbb mentioned in the application.
You should therefore delete the trademarks xxx yyy
from the application by making a suitable request
on form TM-16.
You may however divide the application by making
a suitable request on form TM-53

15

Officeaction

Proposing appropriate condition of acceptance of theapplication or limitation of use of the trademark

15.1

OfficeactionIn case the examiner considers that the application
may be accepted for registration subject to any
condition or limitation, or it may be proceeded foradvertisement subject to any condition orlimitation, the examiner shall propose suchcondition or limitation in clear terms.

15.2

Concept

Section 18(4) of the Trade Marks Act 1999 states Section 18(4)that subject to the provisions of this Act, theRegistrar may refuse the application or may accept
it absolutely or subject to such amendments,
modifications, conditions or limitations, if any, as
he may think fit.
However in all such cases the Registrar should
communicate an objection or proposal in writing to
the applicant. The applicant may agree to therequirement of the Registrar or submit his
observation or apply for a hearing. Failure to do so
within the prescribed period of one month, (unlessthe period is extended) will result in the application
being deemed to have been abandoned.
Accordingly if it appears to the examiner that incase the application is accepted it should be
accepted for registration subject to any condition orlimitation, then the examiner should propose such
Page | 69

condition or limitation in the Examination Report.
In any situation, the condition proposed should not
be for substantially altering the particulars of
trademark application. Only when it appears to the
Examiner that the application can be accepted forregistration if the scope of registration is confined
to a little extent by putting a condition or limitationof use of the trademark.
However if it appears to the Examiner that theapplication can be accepted for registration byslightly modifying the trademark without any
substantial alteration or by confining thespecification of goods or services /deleting someitems in the specification of goods or services, theexaminer should suggest the applicant for suchmodification/deletion by filing a request on form
TM-16, but should not propose to accept theapplication or advertise the application before
registration subject to condition of suchmodification/deletion.
The Examiner, for example, should not impose
condition like ‘the application may be accepted forregistration subject to deleting the picture ofelephant appearing on the trademark’
15.3

OfficeactionIn case the Examiner considers appropriate, he shallpropose in his examination report, the condition orlimitation as follows-

15.3.1

OfficeactionVariation condition governing the use of the mark:

OfficeactionBlank space condition

OfficeactionCondition as to joint use:

15.3.215.3.3Rule 35“In actual use of the marks the name of the goods
appearing in the label shall be varied by indicating
the name of the goods in respect of which the markis used.”Where blank space appears in a label, the condition
may read as“The Blank space appearing on the label shall be
accepted only by a matter of wholly descriptive andnon-trade mark characters”
Section 24

In a case of jointly owned trade mark, the condition
should be“The mark shall be used jointly by all theapplicants mentioned in the application” or“The mark shall be used only in relation to goods
or services with which all the applicants mentioned
Page | 70

in the application are connected in the course of
trade with all the joint applicants and it shall not be
used against each other.
15.3.415.3.5

OfficeactionCondition as to association

OfficeactionLimitation as to area of use or mode of use:

Section 16“ The mark is associated with T.M. No. …….”Condition of limitation to goods may be imposedas“Bidis for sale in the states of ……..( or as “except
for sale in the state of………”), or“Bidis solely for exports”.

15.3.6

OfficeactionIn case the use of mark is limited to certain colours, Section 10
it should be imposed as“the use of mark is limited is limited to the colours,
blue and red in stripes as appearing in the label”

15.3.7

OfficeactionCondition as to disclaimer

Since the provision for requiring disclaimer has
been omitted in the present Act, where it isconsidered by the examiner that some conditions
should be imposed to clearly specify the rights ofthe proprietor, he may suitably word the condition,
as follows“Registration of the trademark shall give no rightto the exclusive use of word……appearing in themark”.

16

Communication of Examination report to theapplicant

16.1

OfficeactionThe Examiner shall prepare his consolidated
examination report through the system containing
therein, as for as applicable,i. all the objections relating to formality
requirements as to filing of application,ii. objections to acceptance of the application forregistration of the trademark under Section 9,
11 and other Sections of the Trademarks Act
1999, andiii. proposals for conditions of acceptance orlimitation to use of the mark, in case theapplication is accepted for registration;and shall change the status of the applicationaccordingly.

16.2

OfficeactionThe Examination report shall be transmitted to theSupervising Examiner through the system, who
would either approve the Report or send back to the
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Examiner for re-examination of the case, throughthe system along with his clear remarks.
16.3

OfficeactionIn case the examination report proposing to accept
the application or to advertise the application before
acceptance is approved by the Supervising
Examiner, he shall move the application foradvertisement in the journal through the system.

16.4

OfficeactionIn case the examination report is sent back to the
Examiner for re-examination, the application the
Examiner shall re-examine the application in lightof remarks of the Supervising Examiner and shallbe resent to the Supervising Examiner through thesystem.

16.5

OfficeactionAll the Examination reports approved bySupervising Examiner shall be released on the dateof such approval and shall be made available on
office website www.ipindia.nic.in with the status of
the relevant application.
However the Examination reports in respect ofapplications examined expeditiously due to arequest filed on form TM-63 shall be released only
after approval of the Supervisor Controller andoverall In-charge of the EPR Section, who may also
send back the case for re-examination, if required.

16.6

OfficeactionThe Examination report so released shall be sent toapplicant or his authorised agent on his email as
registered with this office.

16.7

OfficeactionThe Examination report shall also be sent toapplicant or his authorised agent by post, unless the
reply to examination report on the basis of thereport available on the website has already been
received.

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Chapter III
Post Examination Disposal of Applications Filed For Registration ofTrademarks
Introduction and Scope
Once the application made for registration of trademark is examined and any objection toacceptance of the application for registration is found, the examination report with objection(s)is sent to the applicant/applicant’s authorised agent. The examination report is also put up on
the office website along with application details of the relevant application. The applicant or his
authorised agent submits response to office objections. The response is duly considered, if
objections can be waived on the basis of the applicant’s response and application is accepted forregistration the same is published in the trademark journal. If no opposition to publishedapplication is received or if received, the same is disposed in favour of the applicant, theapplication is moved for registration.
The following is a flow chart for functions relating to Post Examination disposal of
applications filed for registration of trademarks

Examination- approval by Supervising ExaminersExamination Report put up on the website & Despatch tothe applicant/applicant’s agent

Application Objected

No replyIssue Notice U/S 132

No replyAbandoned

Reply to ER by applicant
Consideration of reply by PARM
officials

Application
Accepted/ ABA

If not accepted, Show Cause
Hearing
Publication in TM Journal
TMJ put up on website

No Opposition within 4 months of publication of
the application

Registration, Issuance of Registration
Certificate
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Sr.
No.

General Description

1

Consideration of applicant’s reply to examination
report1.2

Relevant
provision of the
Act & Rules

Requirements After coming to know of the examination reportfrom thecontaining office objection(s) to acceptance of theapplicantapplication for registration, the applicant should

submit proper response to waive office objection(s)1.3Requirements Mode of replying
from theThe response to office objections mentioned in theapplicantexamination report, should be submitted by theapplicant or applicant’s authorised agent concerned,
as the Reply to Examination Report
The response to office objections can be submitted
by sending the scanned copy (in colour pdf fileformat) of the Reply to Examination Report, atparm.tmr@nic.in.
In case the applicant/applicant’s authorised agent
has a level III digital signature he may send the
Reply to Examination Report online through thegateway provided at the home page of the officewebsite www.ipindia.nic.in
The Reply to Examination Report may also be
submitted at the Head Office/appropriate office of
the Trade Marks Registry, personally or by post.
Any affidavit and supporting documents may also
be submitted along with the Reply to Examination
Report1.4.1

Requirements In case of objections as to formality requirement(s),from thethe applicant should comply the requirements asapplicantdesired by the office. The applicant may however

submit to establish that as per Trade Marks Act andRules the formality requirement(s) called by theoffice are not necessary. For example if the office
may has called for consent of the person whose
portrait appears on the trademark, the applicant may
state that portrait appearing on the trademark is notof a particular person, but it is general picture of aman or woman.
1.4.2

Requirements In case of objection to the effect that goods orfrom theservices mentioned in the application do not fall in
applicantthe class mentioned in the application, the applicant

may file a request for amendment of the applicationby correcting the class; the applicant may however
submit that as per classification of goods or services
Page | 74

published by the Registrar, goods or services havebeen rightly classified. In case of objection to theeffect that some goods or services mentioned in theapplication do not fall in the class, the applicant
may file a request for amendment of the application
by deleting items that do not fall in the relevant
class. the applicant may however submit that as perclassification of goods or services published by theRegistrar, all items fall in the class mentioned in theapplication.
1.4.3

Requirements In case of objections as to non distinctiveness of thefrom thetrademark, the applicant’s may submit response to
applicantestablish that the trademark applied for registration

is capable of distinguishing applicant’s goods orservices; or the trademark has acquired a distinctive
character in view of its extensive use in relation to
relevant goods or services, before the date ofapplication. If the applicant claims that thetrademark has acquired distinctiveness by virtue of
its extensive use, the applicant should file anaffidavit as evidence of use of the trademark alongwith supporting documents.
1.4.4

Requirements In case of objections on relative grounds of refusalfrom thebecause of identical or similar trademarks inapplicantrespect of similar goods or services, existing on

records, the applicant may submit to the effect that
trademarks cited as conflicting marks in theexamination report are different than the applicant’s
trademark; or goods or services mentioned in theapplication are different than those covered inmarks cited as conflicting in the examination report.
The applicant may also produce consent/No
objection from the proprietor of marks cited asconflicting in the examination report
1.5.

Office action

Once thereply to examination report Section 18(4)communicating office objections, is received by the Rule 38(4)office, the application is assigned through the Trade
Mark System to officers of PARM (Pending
Applications
Records
Management).
The
designated officer of PARM shall duly consider the
Reply to Examination Report and other documents
attached therewith.

1.5.1

Office action

If after considering the Reply to Examination
Report and other documents attached therewith inview of the provisions of the Trade Marks Act 1999
and Trade Marks Rules 2002 the designated officer
thinks that office objections can be waived, he/sheshall accept the application or publish the same in
the trademark journal. He may also put the
Page | 75

condition(s) and impose limitation(s) as the casemay be, depending upon the application, office
objections and applicant’s reply.
In certain circumstances the application may be
advertised before acceptance in the Trade Marks
journal. The provision for Advertisement Before
Acceptance,isinvokedin“exceptional
circumstances”
The provision for advertisement before acceptance,as the law itself enacts, should be invoked in“exceptional circumstances”. Where the Officer
concerned finds strong evidence of bonafide
commercial adoption and use of the mark.
1.5.2

Office action

In case an application for amendment/correction of
the application on form TM-16 is filed by theapplicant, the designated officer shall at first
dispose of the TM-16 and take appropriate action
through the system and then take appropriate
decision about the acceptability of the trademark forregistration.
In case the TM-16 is allowed, amendment in thedetails of the application shall be incorporated
accordingly by the Officer concerned and the case isconsidered taking into account the amendment.

1.5.3

Office action

1.6.1

Concept

If the designated officer considers that even after
applicant’s response the office objections cannot be
waived, he shall move the case for hearing throughthe system.
Under Section 3of the Trade Marks Act 1999, thecontroller General of Patents, Designs and Trade
Marks is the Registrar of Trade Marks for the
purposes of the Trade Marks Act & Rules. The
Central Government appoints various other officers
with various designations like Examiner of Trade
Marks & GI, Senior Examiner of Trade Marks &GI, Assistant Registrar of Trade Marks & GI,
Deputy Registrar of Trade Marks & GI, Joint
Registrar of Trade Marks & GI, and Senior Joint
Registrar of Trade Marks & GI to discharge thefunctions of the Registrar.

Section 3, 2

Under Section 2(2) (d) any reference to the‘Registrar’ includes a reference to any of theseofficers who perform the functions of the Registrar,
assigned to him.

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1.6.2

Under Section 18(4) of Trade Marks Act 1999 Section 18(4)applications made for registration of trademarks
may be refused registration or accepted forregistration subject to some condition or limitation
which may be appropriate under the provisions of
the Trade Marks Act 1999.

1.6.3

Accordingly all applications are examined as to Rule 38(4)whether these have been properly filed and whether
the mark sought to be registered, is registrable
under the provisions of the Trade Marks Act &Rules and whether it is appropriate to impose any
condition or limitation, in case the application is
accepted for registration. The applicant’s reply to
examination report and evidence of use of mark or
any other matter/circumstance relevant to theapplication is duly considered and the case is moved
further by the designated officer.

2

Treating the application as abandoned, if no reply to
examination report is received

2.1

Office action

In addition to putting the examination report on the Section 132
office website, it is also sent to the Rule 38(5)applicant/applicant’s agent by post if it contains
objections to acceptance of the application forregistration or condition or limitations of acceptanceof the application, unless the reply to suchexamination report has already been received.
If the examination report contains objections to
acceptance of the application for registration orcondition or limitations of acceptance of theapplication and no response to examination report is
submitted by the applicant even after one monthfrom the date of receipt of examination report bypost, a notice under Section 132 of Trade Marks Act
1999 shall be generated from the system requiring
the applicant to submit response to examination
report within one month.
If no response to examination report is submitted by
the applicant even after service of the said notice, anorder treating the application to be abandoned shallbe generated through the system and the same shallbe sent to the applicant/applicant’s agent.

2.2

Concept

Rule 38(4) of the Trade Marks Rules 2002 states Rule 38(4),that if, on consideration of an application for 38(5)registration of a trade mark or on an application for Section 132
an expedited examination of an application referred
to in sub-rule(1) and any evidence of use or of
distinctiveness or of any other matter which thePage | 77

applicant may or may be required to furnish, theRegistrar has any objection to the acceptance of theapplication or proposes to accept it subject to suchconditions,amendments,
modifications
orlimitations as he may think right to impose undersub-section (4) of section 18, , the Registrar shallcommunicate such objection or proposal in writing
to the applicant.
Rule 38(5) states that if within one month from thedate of communication referred to in sub-rule (4),the applicant fails to comply with any such proposal
or fails to submit his comments regarding any
objection or proposal to the Registrar or apply for ahearing or fails to attend the hearing, the application
shall be deemed to have been abandoned.
Further Section 132 of Trade Marks Act 1999 statesthat where, in the opinion of the Registrar, anapplicant is in default in the prosecution of an
application filed under this Act or any Act relating
to trade marks in force prior to the commencementof this Act, the Registrar may, by notice require theapplicant to remedy the default within a time
specified and after giving him, if so, desired, an
opportunity of being heard, treat the application as
abandoned, unless the default is remedied within thetime specified in the notice.
3
3.1

Show Cause Hearing
Office action

In case the office objections to acceptance of theapplication for registration cannot be waived evenafter considering the applicant’s response to
examination report, the matter is set down forhearing through the system.
This hearing commonly known as show cause
hearing is scheduled and conducted at theappropriate office of the Trade Marks Registry.

3.1.1

All matters set for hearing are automatically moved
to TLA module of Trade Marks System.

3.1.2

The Show Cause Hearing section of respective
office of the TMR shall schedule hearing for all
such cases in order of their seniority and as per
availability of hearing officers.

3.1.3

A hearing notice shall be sent to theapplicant/agent/attorney concerned, intimating him
about the application No & date of hearing. The
hearing notice shall be sent approximately 15 days
before the date of hearing.
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3.1.4A cause list in respect of cases fixed for hearing
shall be prepared on monthly basis and the same
shall be put up on office website shall be displayedon the notice board

3.1.5

After allocation of cases to specific hearing officers,
the cause list with the name of the Hearing Officer
shall be displayed on the notice board of therespective office

3.1.6

The Show Cause Hearing Section shall ensure that
all the relevant documents pertaining to theapplication scheduled for hearing are digitised andavailable in the system.

3.1.7

The Hearing Officer shall patiently hearsubmissions of the applicant or applicant’s
authorised agent concerned and peruse all otherdocuments submitted or referred to during thecourse of hearing.
The Hearing Officer shall be courteous in hearing
submissions of the applicants or applicant’s
authorised agent concerned. However he shall bestrict in case the person attending hearing attempts
to create nuisance or behaves improperly or takes
time unnecessarily by making irrelevant
submissions

3.1.8

In case the relevant documents pertaining to theapplication scheduled for hearing are not digitised
and available in the system, the Hearing Officer
concerned shall get it done through the staff
provided to him. In case of erroneous data entry in
the application details, the Hearing Officer shallrectify the error himself or if it is not possible by thehelp of other officials.

3.1.9

The Hearing Officer shall dispose of the application
through the system as per provisions of the Trade
Marks Act & Rules and generate the order/letter tobe sent to the applicant or applicant’s authorised
agent concerned

3.1.10In case a request for amendment of application ismade on form TM-16 the Hearing Officer
concerned shall dispose this request first and thendecide about the acceptability of the application forregistration, since most of such requests are filed toovercome office objections.
In case the TM-16 is allowed, amendment in thedetails of the application shall be incorporated
accordingly by the Hearing Officer concerned andPage | 79the case is considered taking into account theamendment.
3.2.1

Concept

Applications for registration of trademarks arenormally objected for registration on following
main provisions of the Trademarks Act1) Section 9- which describes “absolute grounds
for refusal of trademarks” which are notprima facie “capable of distinguishing” thegoods/services of one person from those ofanother person are devoid of distinctive
character.
2) Section 11, which sets out “relative grounds
for refusal”’ by reason of conflict with priortrademarks and well-known marks, howeverunder Section 12 a mark could be registeredon the basis of “honest concurrent use” when
supported by evidence to that effect3) Section 13 under which a mark is prohibited forregistration in respect of chemical products on
the ground that it consists of name of achemical element or an international nonproprietary name4) Section 14 under which a necessary consent ofa person, whose portrait appears on the
trademark, is required5) Section 15, which governs provisions relating
to registration of a trademark as “a series”
6) Section 16, which govern provisions relating toassociation of trademarks.

3.2.2

Section 9 (1) of the Act sets down the following
absolute grounds for refusal of registration: It
states thata) trademarks which are devoid of any distinctive
character; that is to say, not capable ofdistinguishing the goods or services of one
person from those of another person;b) trademarks which consist exclusively of marks
or indications which may serve in trade, todesignate the kind, quality, quantity, intended
purpose, value, geographical origin ,or the timeof production of goods or of rendering ofservices, or other characteristics of goods orservice,c) trademarks which consist exclusively of marks
or indications which have become customary inthe current language or in the bona fide andestablished practices of the trade:shall not be registered.
Page | 80

distinctive character“The expression ‘distinctive’ in relation to goods inrespect of which a trademark is proposed to beregistered means adopted to distinguish goods withwhich the proprietor of trademark is or may beconnected in the course of trade, from goods in caseof which no connection subsists.”
Acquired distinctiveness

3.2.3

As per proviso appearing in Section 9(1) of the Act,a trademark which comes within the ambit of thissub-Section may still be registered if it can beshown that on the date of application the mark has
in fact acquired a distinctive character as a result of
the use made of it.
In order to overcome office objections raised
under Section 9(1) the applicant may submit themark has acquired a distinctive character by virtue
of its prior use
The use of trademark must be established byadequate evidence. Under section 129 of the Act,‘in any proceeding before the Registrar, evidence
shall be given by affidavit. But the Registrar may, if
he thinks fit, take oral evidence in lieu of, or in
addition to, such evidence by affidavit’. Rule 116
prescribes the manner in which the affidavits are to
be executed.
The requirements for securing protection under theproviso to section 9(1), as expressed in Duckham &Co’s Trade Mark Application, [(2004) RPC 28] areas follows:a) the mark must have been used by anundertaking as a means of identifying thetrade origin of the goods;b) the effect of this use is that the relevantpublic(or a significant proportion thereof)
have come to rely upon the mark, in thecourse of trade, as a means of identifying thetrade origin of the goods;c)

if the mark is but one of a number used by
the undertaking to identify the trade origin of
the goods, the competent authority must be
satisfied that the mark applied for has, byitself, come to foster a concrete expectation
amongst the relevant public that goods
bearing that mark originate from, or under
the control of, a single undertaking.”
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A descriptive trade mark may be entitled toprotection if it has assumed a secondary meaning
which identifies it with a particular product or as
being from a particular source [2005(30)PTC(SC)1]
Acquired distinctiveness cannot therefore be shown
to exist solely by reference to general, abstract datasuch as pre-determined percentages of recognitionby the relevant class of persons. Instead the viewsof an average consumer must also be taken into
account.
3.2.4

Examination of evidence of use as a Trade MarkIn Windsurfing Chiemsee (C108&109/97) [1999]
ETMR 585 the court observed that: “If thecompetent authority finds that a significant
proportion of the relevant class of persons identify
goods as originating from a particular undertaking
because of the trade mark, it must hold therequirement for registering the mark to besatisfied.”
Having established that the mark has been used as atrade mark (including use as a secondary trademark) the next thing is to assess the extent and effectof the use. In this regard, ECJ provided guidance asfollows:“In assessing the distinctive character of a mark in
respect of which registration has been applied for,the following may also be taken into account:i. the market share held by the mark;ii. how intensive, geographically widespread andlong-standing the use of the mark has been;iii. the amount invested by the undertaking inpromoting the mark;iv. the proportion of the relevant class of persons
who, because of the mark,v. identify goods as originating from a particularundertaking;vi. statements from chambers of commerce andindustry or other trade and professional
associations”.
In the affidavit submitted as evidence of use thetrademark, specific statement should be there as tothe use of the mark in relation to specific goods orservices, when it first commenced and the annual
turnover based on use of the mark in relation to
specific goods or services.
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The use of trademark must be before the date offiling. Any use after that date should not be taken
into account.
If there have been gaps in the use, it will benecessary to consider how this affects the reputationof the mark applied for. For example, a strawberry
grower may not be able to demonstrate sales
throughout the year, but if he sells his strawberries
for two months of the year every year for ten years,
that is likely to be sufficient to illustrate continuous
use, given the seasonal nature of his product.
Another trader might sell goods under a certain
mark for twelve years, but there may be a two year
gap leading up to the date of the application inwhich few or no sales took place. Before ajudgement can be made about accepting or refusing
the mark, it would be necessary to look at all thesurrounding facts to see what effect that gap had. Ifsales weren’t particularly strong beforehand, thereputation of the mark may have been severely
diminished. If, on the other hand, sales were very
good both before and after, it may be that the gap
would have no negative effects on the reputation atall.
Annual Turnover figures should be given for thesales of goods/rendering of services under the markstarting from year of first use to the date of making
affidavit. In case of figures are not available forearlier years, the deponent should make statement tothis effect.
If the period of use is shorter, the turn over for theperiod in question should be considerable, having
regard to the nature of goods. The greater theturnover, the more likely it is for the mark to be
accepted. Turnover, advertising and period of use
are considered together - massive turnover and/or
advertising could compensate for a short period ofuse.
The words "acquired a distinctive character as aresult of the use made of it" therefore mean the use
made of the mark in relation to the goods/services
for which it is proposed to be registered
An analysis of the nature of the use of the markfollowed by a careful evaluation of the extent of theuse prior to the date of the application will, in
virtually all cases, enable the Registrar to reach areliable finding on whether, and for which
goods/services, the mark has acquired a distinctive
Page | 83character because of the use made of it.
Regarding unconventional trade marks

The following types of marks come under the
category:Colour trade marks
Sound marks
Shape of goods, packaging,
Smell trade marks

Colour trade marks

In order to constitute a trade mark, a colour
or combination of colours must be capable ofdistinguishing the goods or services of
one trader from those of other traders. If
a particular colour of packaging has become
distinctive in fact as indicating the goods ofa particular trader, there is no reason why itshould not be protected by registration.
It is conceivable that extensive use of twocolours in many different arrangements
may result in the colour combination per
se becoming distinctive of the applicants'
goods. However, if the colours are used not
in a special or particular pattern or
arrangement, it is likely to be more difficult
to prove that in such cases colour would lend
distinctiveness as a badge of origin.
Single Colours

A single colour may be registerable as a trade markif it is very unusual and peculiar in a trade and isrecognized by traders and consumers alike that itserves as a badge of origin for that class of goods.
As colour per se is not normally used by traders as ameans of brand identification, unlike words or
pictures, consumers are not in the habit of making
assumptions about the origin of goods and services
based solely on their colour or the colour of theirpackaging. It follows therefore that single colours
will only in exceptional circumstances be capable ofdenoting the origin of a product or service. Marksconsisting of a single colour will usually be liable toobjection under Section 9(1) (a) of the Act because
they inherently lack the capacity to distinguish.
Combination of colours

The expression “trade mark” in section 2(1) (zb) isdefined to include “combination of colours”.
Page | 84

A combination of colours may be registrable, but
this will depend on its uniqueness and how they areused. If the colours are presented as a figurative
mark, then as few as two colours could be accepted;
but if they are simply the colours of the packagingof the product they are less likely, prima facie, toindicate trade source. When applications consist
merely of colours applied to the goods or theirpackaging it will be necessary to consider how
unusual the colour combination is in relation to thegoods and whether, prima facie, the combination is
likely to strike the relevant consumer as anindication of trade source. It is, for example,
unlikely that the average consumer of washingsoaps would, without extensive and exclusive use,view colour combinations such as blue and white or
yellow and white as an indication of trade source.
Wherever the exclusive right to color is sought,
weighty evidence should be necessary to overcome
objection under Section 9(1)(a) of the Act.
It is for the applicants to demonstrate whether theway colour is used forms an essential part of thesubject matter of their trade mark. For example, if
evidence of acquired distinctiveness shows that a
specific colour has come to be recognised as a trade
mark when it is used in a particular manner, as in
the case of logo used by HP or Bharat Petroleum intheir service centres, it may be advisable to define
the mark in this way and establish claim forregistration of mark, i.e. logo or particulargeometrical device, limited to colours under section
10 of the Act. In such cases, the rights in trademark
lies in particular logo or geometrical device limited
to be used in that colour /those colours.
Sound marks

The law does not explicitly exclude “sound marks”
from registration. Sound marks, in a trade marksense, are extremely rare. Accordingly, a trade
mark may consist of a sound and represented by aseries of musical notes with or without words. To
this end1) applications for sound marks must clearly statethat they are sound marks. Otherwise theapplication will be considered as if it were aword and/or device mark (e.g. in the case ofmusical notation) and2) graphic representation requirements are met byrepresentation of the sign by a musical stave
divided into measures and showing, inPage | 85

particular, a clef, musical notes and rests,
indicating relative value, and sharps, flats andnaturals (accidentals).
Assessing distinctive character of sound marks:

The acceptability of a sound mark must, like words
or other types of trademarks, depend upon whether
the sound is or has become a distinctive mark; thatis, whether the average consumer will perceive thesound as meaning that the goods or services are
exclusively associated with one undertaking.
Prima facie, no sound marks will qualify for
acceptance without evidence of factual
distinctiveness. In particular, the following
sounds may not be accepted for registration
as trademarks since these are incapable ofdistinguishing goods or services of one
person from those of others very simple pieces of music consisting
only of only I or 2 notes;
 songs commonly used as chimes:
 well known popular music in respect ofentertainment services, park services; childrens nursery rhymes, for goods orservices aimed at children; music
strongly
associatedwithparticular regions or countries for thetype of goods/services originating fromor provided in that area.
Smell trade marks

As a marketing strategy, manufacturers of goods
introduce smells of scents to make the use of the
products more pleasant or attractive. These goods
could include cleaning preparations, cosmetics andfabric softeners. Even less obvious goods are now
manufactured with particular scents to add to the
product’s appeal, for example, magazines, pens,
paper and erasers.
Consumers of such fragranced goods are unlikely toattribute the origin of the products to a single trader
based on the fragrance. Whatever may be the case,for purposes of registration as a trade mark, unlessthe mark is ‘graphically represented’ it will not be
considered to constitute as a trade mark.
The expression “trade mark” is defined inter alia tomean “a mark capable of being represented
graphically and …..” Rule 2(1) (k) clarifies that“graphical representation means the representation
Page | 86

of a trade mark for goods or services in paperform”.
As indicated above, the definition of trade markmakes it clear that in order to constitute a trade
mark it should be “represented graphically” [section
2(1)(zb)] Accordingly since smell marks do notmeet this requirements, under the Indian trademark
system.
Shape of goods

The expression “trade mark” is defined to mean “amark capable of being represented graphically…….” and “may include shape of goods and theirpackaging”.
Section 9(3) provides that the trade mark shall not
be registered if it consists exclusively of –a) the shape of goods which results from the natureof goods themselves; orb) the shape of goods which is necessary to obtaina technical result ; orc) the shape of goods, which gives substantial
value to the goods
When an application for a trade mark consisting ofa shape of goods or packaging is made, theapplication should be in relation to the goods only
and not in respect of the container e.g. where theright in a mark is claimed in respect of perfumes
contained in a bottle , the goods should be shown as“perfumes” and not as “bottles” which is merely acontainer“Shape which results from the nature of the goods”

The purpose of Section 9(3)(a) is to keep free basic
shapes of goods that should be available for use by
the public.
Section 9(3)(b)- Shape necessary to obtain a technicalresult”.

This sub-clause prohibits registration as a trade
mark where the shape of goods is necessary toobtain a technical result.
Accordingly only when it can be shown that anessential feature (which may include the overall
impact arising from the way the individual features
are arranged) is not only attributable to a technicalresult, i.e. the shape is not one which would be
adopted for its functional efficiency, it will not becaught by section 9(3)(b). Shapes which do consist
exclusively of functional features attributable only
Page | 87

to the technical result will be open to objections
under Section 9(3)(b); marks in this category are
deemed to be incapable of acquiring a distinctive
character and therefore the filing of evidence will
not overcome the objection. The ground for refusal
or invalidity of registration imposed by thatprovision cannot be overcome by establishing that
there are other shapes which allow the same
technical result to be obtained.
Section 9(3)(c)- “Shape which gives substantive value
to the goods”.

This subsection deals with shapes which add
substantial value to the goods, disregarding themain function attributable to a trade mark i.e. source
identification function.
Whilst the legal test for distinctiveness is the samefor shape marks as for other marks, recognition
must be given to the differing perceptions of theaverage consumer in relation to non-traditional
trademarks. In particular, the average consumer
may not as readily accept the appearance of thegoods themselves as an indication of trade origin.
This is because “average consumers are not in the
habit of making assumptions about the origin of the
products on the basis of their shape or the shape of
their packaging in the absence of any graphic orword element”. [Procter and Gamble v OHIM]
In Procter and Gamble, the ECJ rejected theappellant’s argument that the marks were distinctive
because, inter alia, the type of product was
relatively new and there were no similar dishwasher
tablets on the market at the time the applications
were filed. The Court repeated its conclusions in
Henkel and pointed out that “the more closely theshape for which registration is sought resembles theshape most likely to be taken by the product inquestion, the greater the likelihood of the shape
being devoid of any distinctive character”.
The fact that functional claim has been previously
made in a patent application will be prima facie
evidence that those aspects of the shape covered by
the patent claim are necessary to achieve a technicalresult. This will attract objection under section
9(3)(b).
The test is whether there are any
significant aspects of the shape or its arrangement
which are not only attributable to the achievementof a technical result.
As European Court of Justice Ruled in the Henkel
case for the purposes of Sections 9(1), the shape ofPage | 88packaging is to be treated as the shape of the goods
themselves where the goods are traded in packaged
form, for reasons associated with the nature of thegoods; for example, beverages, cleaning fluids etc.
The shape of an ornamental lamp , for example
would appear to add substantial value to the goods
by making it attractive.
This would attract
objection under section 9(3)(c ) and also 9(3)(a)Three dimensional markWith a view to distinguish a three dimensional
representation from two dimensional marks
depicting containers etc., Rule 25(12) mandates theapplicant to make a specific statement in theapplication that the mark sought for registration is athree dimensional trade mark. As and when themark is accepted and advertised, suitable entry tothat effect will be made below the mark in thejournal publication and later in the registration
certificate, when the mark is registered.
The requirement of distinctiveness for the three
dimensional mark is the same as for othertrademarks.
However, besides distinctiveness,functionality aspect as per section 9(3) will also
arise.
3.2.5

Overcoming objections as to Section 9 (2) and 13,

In case of objections raised under Section 9(2) andSection 13 which enlist trademarks which areprohibited for registration, or in case of objections
raised to the effect that the trademark is prohibitedfor registration by any law or direction of theGovernment, for instance instructions issued by theCentral Government under Section 23(1), theapplicant can only submit that the trademark sought
to be registered does not come under specified
prohibition(s). Once it is established that theregistration of the trademark applied for registrationor the use thereof, is prohibited by any provision of
the Trade Marks Act or any other law orGovernment direction, it shall not be accepted forregistration, even if the applicant adduces ample
evidence of use of the trademark.
The only option the applicant has is to submit that
his trademark does not come under saidprohibition(s). He, however amend the application
by filing application on form TM-16, to avoid
prohibitions. The TM-16 then shall be disposed.
Page | 89

3.2.6

Overcoming objection regarding the relative grounds
for refusal

Objections raised under Section 11 can beovercome by the applicant by :
 removing the conflicting goods/services by wayof amendment.
 obtaining consent from the proprietor of thecited mark(s) under Section 11(4) filing evidence to establish honest concurrent
use to secure registration under section 12;
 By securing rectification of register excluding
such goods/service of the same description fromthe specification of the cited mark, under
section 57;
 By dividing the application and allowing theobjections- free apart of the application toproceed further.
By removing the conflicting goods/services.
Many applications are filed with very wide
specifications and/or include terms which cover awide range of goods/services. The applicant may
not actually intend to trade in all the goods or offer
all services and therefore may be able to be more
specific about his intended activities. If deletion of
conflicting goods/services is desired during thecourse of hearing, the Hearing Officer may consider
it and allow the request for such amendment ofgoods/ services but in no case he shall allow
enlargement,
additionorsubstitutionofgoods/services originally mentioned in theapplication.
When using exclusion as a means of overcoming acitation it is normally necessary to ensure that all
the goods and/or services considered to be both
identical and similar to the cited mark are excluded
from the application. the application will need to beamended to explicitly exclude not only all those
goods/services that are considered to be identical,
but also any descriptions of goods/services that areconsidered to be sufficiently similar that the markapplied for would give rise to a likelihood ofconfusion if it were used in respect of those
goods/services.
For example if application in Class 9, is in respectof “Electric cables” and citation of earlier
application in Class 9, is in respect of “Speakers andparts and fittings there for”, the requested
amendment should be as “Electric cables for use in
Page | 90

providing electric supply in building premises”. Or“Electric cables not for use in relation to speakers”
By obtaining consent from the proprietor of the citedmark(s)Section 11(4) of the Trade Marks Act 1999
overrides the prohibitory provisions of section 11 inempowering the Registrar to allow registration
notwithstanding the objections where the proprietorof the earlier trade mark(s) or other earlier rights
consents to the registration. In such case theapplication may be accepted for registration under“special circumstances”
Consent letter from the proprietor of the earlier
mark must contain the following particulars:
1. Assertionofproprietorshipoverthesame/similar trademark(s) by virtue ofregistration under particular N0(s)2. The goods/services to which the proprietor of
the cited mark is consenting.
If thespecification of goods/services indicated in the
Letter of consent is not the same as that for
which registration is sought or narrower thanthat applied for the applicant must seek toamend the specification of goods covering only
those goods in respect of which consent is given
3. The Letter of consent should be from the same
person whose name appears in the citation. The
genuineness of the consent letter should bethoroughly verified by the Hearing Officer by
seeing records of cited marks concerned.
4. Letters of consent should be in English or
Hindi, if it is in a regional or foreign language,
it should be accompanied by a certified
translation.
Considering evidence to establish honest concurrentuse

If during the course of hearing the applicant
demonstrates on the basis of evidence produced,that they have built up a sufficient amount of
goodwill or common-law right in their mark, theHearing Officer will allow an application whichconflicts with an earlier mark. The important point
to be considered is that common-law rights haveaccrued by reason of honesty of adoption,
continuous & concurrent use of the trade mark, andwithout the owner of the earlier right having taken
any prohibitive action against the applicant.
If Hearing Officer is convinced that the applicant
Page | 91

had bonafidely adopted the trademark and had
acquired common law rights in the mark by virtueof honest & concurrent use of it, he may , in spite ofearlier similar trademarks in respect of same/similar
goods/services being on record, order foradvertisement of application before acceptance.
By dividing the application and allowing theobjections- free apart of the application to proceedfurtherIn the Trade Marks Act 1999, a facility for divisionof application is provided to the applicant.
Under proviso to section 22, if an amendment ismade to single application, involving division ofsuch application into two or more applications, thedivided application will retain the date of making
the original application.
A request to divide his application is made on
behalf of the applicant, on form TM-53. Each
divided application is treated as separate
application, with the same filing date. A separate
new serial number is allotted to the divided
application and they are linked by cross referencewith the initial application.
In case of a multiclass application, if citations ofconflicting marks are limited to particular class (es)of that application the applicant may request fordivision of application so that application with clear
classes may be separated.
3.2.7

Attending to request made in form TM-16 for change Section 22 &in the application details
Rule 41

A correction of any error in the application or any
amendment in the application is permitted by theTrade Marks Act.
An applicant for registration of a trade mark may,before the registration of the mark, apply in Form
TM-16 accompanied by the prescribed fee for thecorrection of any error in his application or any
amendment of his application.
This provision is made for correction of mere
clerical errors in the application. No correction shalltherefore be allowed which seeks substantial
alteration in the application as filed. The substantial
amendment in the trademark, proprietor details,
specification of goods/services (except deletion ofsome of the existing items, statement as to the useof mark shall not be permitted in the name ofcorrection.
Page | 92

However request for amendment as to change in the
proprietorship of the mark on the basis of valid
assignment or transmission; amendment in addressof the applicant or in the applicant address forservice; deletion confinement, clarification of
specificationofgoods/services,confinement/limitation in the area of sale ofgoods/rendering of service, division of multiclassapplication etc. can be allowed.
3.3

Office action

Adjournment of hearing

If the applicant or his authorized agent is notprepared or is unable to appear for hearing and files
an application for adjournment of hearing, theHearing officer may allow the request for
adjournment and then a next date will be fixed forhearing. However no adjournment will be given on
frivolous grounds. Hearings may also be adjournedand may be fixed on another date due toadministrative reasons. In all adjournments ofhearing, a fresh hearing notice fixing hearing on
another date shallbe issued totheapplicant/agent/attorney concerned.
3.4

Office action

Acceptance of the application

After duly considering the evidence of use of themark, the distinctive nature of the mark, existenceof earlier similar marks, if any, the nature ofgoods/services covered under the application andother relevant facts, the Hearing Officer may accept
the application for registration or he may accept theapplication with condition as to use of the
trademark or limitation as to area of trade, as hethinks fit; or he may propose the application to be
advertised before acceptance.
In certain circumstances the application may be
advertised before acceptance. The provision for
Advertisement Before Acceptance, is invoked in“exceptional circumstances”
The provision for advertisement before acceptance,as the law itself enacts, should be invoked in“exceptional circumstances”.
Where the the
Hearing Officer concerned finds strong evidence of
bonafide commercial adoption and use of the mark,the Examiner or the hearing officer may “Accept”
the application and order the mark to be advertised“as accepted”

Page | 93

3.5

Office action

Allowing division of the application

On a request made on form TM-53 on behalf of theapplicant to divide a multiclass application, theapplication shall be divided as requested. Each
divided application will be treated as separate
application, with the same filing date. A separate
new serial number is allotted to the divided
application and they will be linked by crossreference with the initial application.
3.6

Office action

Proviso to
Section 22 of
the Trade Marks
Act 1999 andRule 104 of theTrade Marks
Rules 2002

Withdrawal of application

During the course of hearing the applicant may
desire to withdraw the application, or the authorised
agent of the applicant may desire to withdraw theapplication on half of the applicant. In suchcircumstances, the Hearing officer will require thewithdrawal letter to be submitted in writing. The
withdrawal letter will be uploaded in the system.
The genuineness of withdrawal letter as well as theauthority of the person withdrawing the application
shall be verified by the Hearing Officer on the basisof records of the application. If withdrawal of
application is done by the competent person, theHearing officer concerned will treat the application
as withdrawn, enter his remarks in the system to thiseffect and update the status of applicationaccordingly.
3.7

Office action

Refusal of application

If the Hearing Officer is not convinced with thematerials produced & submissions made in thecourse of hearing and he may refuse the application
for registration.
3.8

Office action

Communication of decision

A communication letter shall be generated throughthe system, in respect of all types of orders passedby the Hearing Officer. The said letter shall be sent
to the applicant/applicant’s authorised agent
concerned, latest within one week of the order.
3.9

Communication of grounds of decision

Section 18(5)On request made by the applicant on form TM-15
for seeking grounds of decisions of the Registrar,
the grounds of decisions as to acceptance (oradvertisement before acceptance) of application
with any condition or limitation, or refusal of theapplication shall be generated through the system,on the basis of remarks or noting of the then hearing
officer, and the same shall be communicated to theapplicant.
Page | 94

3.10.1

Requirementfrom theapplicant

The applicant or applicant’s authorised agent
concerned should attend hearing before thedesignated hearing officer and make his
submissions with decency and courteously. In case
it is not possible for the applicant or applicant’s
authorised agent concerned to attend hearing, heshould file as application for adjournment as per the
Trade Marks Act & Rules.

3.10.2

Every person appearing for the hearing should show
his identity and authority to attend the hearing on
behalf of the applicant. In case of the agent, heshould establish that he is authorised agent of theapplicant on record, or else he should file latest PA
in his favour along with a request on form TM-16 torecord his address as address for service of theapplicant.

3.10.3

In case the application is filed or prosecuted by atrademark agent, applicant’s address for service isnormally requested to be that of the trademark
agent. In case, the trademark agent is changed or theapplicant withdraws the Power of Attorney andwants to prosecute the application himself, heshould necessarily file an amendment application onform TM-16, for recordal of such change in addressfor service of the applicant.

3.10.4

An application on form TM-16 should be filed onbehalf of the applicant for recording all changes thathave taken place in respect of the application. The
applicant or applicant’s authorised agent appearing
for the hearing should point out about all therequests made on form TM-16, which are still
pending and should insist on their disposal.
The applicant or applicant’s authorised agent should
file proper requests/application with proper fee inaccordance with the Trade Marks Act & Rules.

3.10.53.10.6

The applicant or applicant’s authorised agent
concerned should abide by the order of the Hearing
Officer. In case he is aggrieved he may file anappeal before the IPAB or review, as per relevant
provisions of the Trade Marks Act & Rules

4

Publication of applications in the trademarks journal

4.1.1

Office action

When an application for registration of a trade mark Section 20, Rule
has been accepted whether absolutely or subject to 43
conditions or limitations or it is even ordered to be
advertised before acceptance, the application isaccordingly advertised in the trademark journal
along with conditions or limitations, if any.
Page | 95

The Supervisory Examiner approving the
Examination report proposing to accept theapplication or advertise the application before
acceptance, or the designated officer in PARM or
Hearing Officer, as the case may be, who accepts
the application or orders to advertise the application
before acceptance shall himself move suchapplication for advertisement in journal throughrelevant module of the Trade Marks System.
4.1.2

The advertisement of application in the trademark
journal should contain details of the trademark, dateof application, priority claim (if any), details of theapplicant with his address, applicant’s address forservice including his agent’s detail, class &specification of goods or service , the statement as
to use of the trademark and the appropriate office.

4.1.3

The system generates a preview of theadvertisement, the officer concerned if finds thecontents proper, approves the case foradvertisement and the application is accordingly
compiled through the system for publication in the
trademark journal.

4.1.4

All such applications which are compiled for
publication in the trademark journal are publishedin the journal by a designated officer from Head
Office of the Trade Marks Registry at every
Monday and the same is made available on the
home
page
of
the
official
websitewww.ipindia.nic.in free of cost to the public.

4.1.4

The trademark journal contains Public Notices and notifications, if any, issued
by the office Trade Mark applications which are accepted orordered to be advertised before acceptance re-advertisements of applications, if ordered byany competent officer
 Corrigenda or further notification in respect ofearlier published application,
 List of trademarks, which are registered,renewed, removed, application withdrawn, etc.
 Postregistration
changes
including
Assignments/transmission recorded
 International
non-proprietarynames
aspublished by WHO from time to time.
 Other information as considered necessary to be
published from time to time

Page | 96

4.1.5
4.2

Other matters to be published in the journal arecollected from different Sections of the TMR.
Concept

The Section 20 of the Trade Marks Act 1999 states
that1) When an application for registration of a trade
mark has been accepted, whether absolutely or
subject to conditions or limitations, theRegistrar shall, as soon as may be after
acceptance, cause the application as accepted
together with the conditions or limitations, ifany, subject to which it has been accepted, to be
advertised in the prescribed manner:
Proviso to section 20 enables the Registrar tocause an application for registration of trade
mark to be advertised before acceptance if it
relates to a trade mark to which sub-section (1)of section 9 and sub-sections (1) and (2) ofsection 11 apply. Such a course can also be
adopted by the Registrar in any other case where
it appears to him to be expedient “by reason ofany exceptional circumstances so to do”

5Withdrawal of acceptanceRegistrar of trademark is empowered to withdraw
acceptance of an application for registration which
is done in error or it should have been accepted forregistration subject to conditions or limitations otherthan those under which it is accepted.
5.1.1

Office action

Where it is found that an application for registrationof trademark has been accepted in error; or
the trade mark should not be registered subject toconditions or limitations subject to which theapplication has been accepted; orthe trade mark should be registered subject toconditions or limitations or to conditions additional
to or different from the conditions or limitations
subject to which the application has been accepted,
any officer, in particular the officer in Charge of
EPR or PRAS of the TMR, shall put up a note to the
CGPDTM, who is the Registrar of Trade Marks,
proposing to withdraw the acceptance of theapplication.
This may also happen in case the application, due todata entry errors, is examined and accepted forregistration with a trademark other than that appliedby the applicant, or the application is examined andaccepted for registration with specification of goods
Page | 97

or services, or classification thereof, other than thatapplied by the applicant. The need to withdraw theacceptance of the application may arise, in case an
International Non Proprietary Name is erroneously
accepted for registration in respect of medicinal
preparations, or in case a prohibited or notregistrable trademark is erroneously accepted forregistration.
5.1.2

After approval of the said note by the CGPDTM,
the officer concerned shall move the matter to theShow Cause Hearing Section, through the system.

5.1.3

The Show Cause Hearing Section shall issue a Rule 42
notice under Rule 42 of the Trade Marks Rules
2002, to the applicant to communicating theRegistrar’s objection to such acceptance andproposal of the Registrar, if any, to acceptance ofthat application.

5.1.4

After receipt of the notice, the applicant may either
withdraw the application or agree to office proposal
and amend the application accordingly or request
for hearing.

5.1.5

The Hearing Officer shall dispose of the matteraccordingly as per provisions of Trade Marks Act &Rules. The concerned Hearing Officer shallwithdraw the acceptance of application or change
the conditions or limitations imposed while
accepting the application, as the case may be.

5.2

Concept

Section 19 enables the Registrar to withdraw Section 19, Rule
acceptance of an application in error or in 42
circumstances the trade mark should not beregistered or should be registered subject toconditions or limitations.
In such cases, rule 42 provides for the following
procedure The Registrar shall communicate in writing suchobjection to the applicant
 30 days notice from date of receipt ofcommunication for response is mandatory
 the applicant may amend the application tocomply with the requirements of the Registrar
or may apply for a hearing.
 If the applicant does not respond within theprescribed time, the acceptance of theapplication shall be deemed to be withdrawn.
 The application thereafter shall proceed as if it
had not been accepted
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5.3.1

Office action

Where the applicant desires a hearing, Registrar a
notice appointing shall be issued by the Show Cause
Hearing section scheduling the hearing at least 15
days after the notice.

5.3.2

On the said date of hearing, the Hearing Officer willpass such orders as he may deem fit under the Trade
Marks Act & Rules.

5.3.3

The Hearing officer shall accordingly move theapplication further through the System but putting
his appropriate remarks.

6.

Registration of trademarks

6.1.1

Office action

Every application advertised in the trademark
journal and a period of 4 months has expired after
advertisement or re-advertisement of theapplication, andin respect of which no oppositions has been filed, or
opposition, if filed, has been disposed of favour of
the applicant;proceeds for registration unless any instruction of acompetent officer to withdraw the acceptance orcancel the advertisement of the application isreceived.

6.1.2

In case the application was advertised before
acceptance and it becomes due for registration interms of the conditions as mentioned in earlier Para,
the application shall be accepted for registration
through the system and only then it shall be moved
for registration.

6.1.3

All such applications are taken up for registration
process in order of seniority of their advertisement
or re-advertisement in the trademarks journal.

6.1.4

All applications brought under the registration
process shall be approved by the officer concerned
through the system, before generation ofregistration certificates. The officer concerned of
the Registration wing of the EPR section shallensure that the application being approved forregistration is OK.

6.1.5

In fact there are in-built checks in the system which
does not allow such cases for registration, however
the officer concerned should also ensure that1. The data entry of the application has been done
correctly and the application has been duly &correctly advertised in the trade marks journal.
In case of major errors in the advertisement as tothe trademark, date of application, class &Page | 99specification of goods or services and thestatement as to use of the trademark theapplication shall be re-advertised. The mattershall be sent through the system to Pre
Advertisement Amendment Section (PRAS) for
re-advertisement by putting a remark to thiseffect in the system. Such cases shall not beprocessed for registration.
2. No request for amendment of the application ispending. In such cases the matter shall be sent
through the system to Pre Advertisement
Amendment Section (PRAS) for disposal ofamendment application, by putting a remark tothis effect in the system. Such cases shall not beprocessed for registration until the amendment
application has been allowed & a notification tothis effect has been published in the trademark
journal or the amendment application has beenrefused.
3. No instruction as to withdrawal of acceptance isthere in the matter. In such cases the matter shallbe sent through the system to Show Cause
Hearing Section (SCHS) for hearing of
application, by putting a remark to this effect inthe system. Such cases shall not be processed forregistration until the hearing as to Section 19 of
the Trade Marks Act 1999 is concluded infavour of the advertisement of the application.
4. No opposition to registration of the applicationis pending. In case opposition(s) to any
application has/have been disposed of in favourof the applicant, the officer shall see whether all
the vital documents of the application andopposition(s) including final order(s) of
opposition proceeding have been scanned &uploaded in the system and the status of theapplication has been updated accordingly.
5. The registration of the trademark is notprohibited by any instruction from theGovernment or from the court of law. In suchcases the matter shall be kept pending by puttinga remark to this effect in the system.
6. No formality requirement is left in respect of theapplication. For example No fee like association
fee, extra space fee for goods or services
exceeding 500 characters are due to be paid by
the applicant, no formality requirement likefiling of the Power of Attorney in favour of theagent is required. In such cases, the officer
concerned shall generate a letter requiring theapplicant to comply with above formalities, andPage | 100the application shall proceed for registration
only after compliance of requirements.
6.2.1

Concepts

The Registrar of Trade Marks has a Register of Section 6
Trade Marks as mentioned in Section 6 of the Trade
Marks Act 1999, which has all details of registeredtrademarks.
Once a trademark is registered, it is entered in theRegister or its entry is made on the Register.

6.2.2

Under Section 23(1) of the Trade Marks Act 1999
Section 23
when an application for registration of trade markhas been accepted and eithera) the application has not been opposed and thetime for notice of opposition has expired; orb) the application has been opposed and the
opposition has been disposed of in favour of theapplicant,the trade mark is registered, unless the Central
Government otherwise directs, and the trade
mark when registered shall be registered as ofthe date of the making of the said applicationand that date shall, subject to the provisions ofsection 154, be deemed to be the date ofregistration.
Under Section 23(2), on the registration of a trademark, a certificate in the prescribed form with theseal of the Trade Marks Registry, is issued to theapplicantUnder Section 23(3) where registration of a trade
mark is not completed within twelve months fromthe date of the application by reason of default on
the part of the applicant, the Registrar may, after
giving notice to the applicant in the prescribedmanner, treat the application as abandoned unless it
is completed within the time specified in that behalf
in the notice.

6.2.3

Rule 59 provides the manner as to how the entry in
the Register of trademarks is made. Under thisRule1) Where no notice of opposition to an application
advertised or re-advertised in the Journal is filed
within the period specified in sub-section (1) ofsection 21, or where an opposition is filed and it
is dismissed, the Registrar shall, subject to theprovisions of sub-section (1) of section 23 or
section 19, enter the trade mark on the register.
2) The entry of a trade mark in the register shallspecify the date of filing of application, thePage | 101

actual date of the registration, the goods orservices and the class or classes in respect ofwhich it is registered, and all particulars
required by sub-section (1) of section 6
including –a. the address of the principal place of businessin India, if any, of the proprietor of the trade
mark or in the case of a jointly owned trademark, of such of the joint proprietors of the
trade mark as have a principal place ofbusiness in India.
b. where the proprietor of the trade mark has noplace of business in India his address forservice in India as entered in the application
for registration together with his address in
his home country.
c. in the case of a jointly owned trade mark,where none of the joint proprietors has aprincipal place of business in India, theaddress for service in India as given in theapplication together with the address of eachof the joint proprietors in his home country.
d. the particulars of the trade, business,
profession, occupation or other description of
the proprietor or, in the case of a jointly
owned trade mark, of the joint proprietors of
the trade mark as entered in the application
for registration.
e. particulars affecting the scope of theregistration or the rights conferred by theregistration,
f. The convention application date (if any), tobe accorded pursuant to an application fromapplicants of a convention country madeunder section 154.
g. where the mark is a collective or certification
mark, that fact;
h. Where the mark is registered pursuant to subsection 4 of section 11 with the consent of the
proprietor of an earlier trade mark or otherearlier right, that fact; andthe appropriate office of the Trade Marks
Registry in relation to the trade mark.
The Registrar may from time to time, in
consultation with computer experts, formulate
guidelines for keeping official records in electronic
form.

Page | 102

Chapter IV
Tribunal Section(Opposition & Rectification Proceedings)
Introduction:
The Tribunal Section is constituted for dealing with contested matters- namely oppositions toapplications made for registration of trademarks, applications made for rectification ofregistration of trademarks, and other contested matters assigned to this section.
This Chapter is divided in to three Sections – Section A deals with Opposition Proceeding,Section B deals with Rectification Proceeding and Section C deals with proceeding relegated toreview petition.

Section A: Opposition
After advertisement of a trade mark in the Trade Marks Journal, section 21 provides a period of
4 months within which the registration of the trade mark may be opposed by any person. This
opposition proceeding can be filed only before the Registrar and cannot be taken direct either tothe Court or the Appellate Board (IPAB). If the opposition is successful, the registration of the
trade mark will be refused. If it fails, the mark will be registered.

Sr.
No.

General Description1.
1.1

Relevant
provision of the
Act & Rules

How a opposition proceeding can be startedConcept

Who may oppose the Application:

Section 21(1)“Any person” may give a notice of opposition to theregistration of a trade mark.
Notes:The person filing the opposition need not to haveany commercial or personal interest in the matter ora prior registered trade mark owner.
The question of bona fides of the opponent does notarise.
1.2

Concept

Grounds of opposition:

Section 9, 11,
13, 14 and 18(1)The law doesn’t specify the grounds of opposition.
However, an opposition is ordinarily based on any
Page | 103

one or more of –- absolute grounds as mentioned in Section
9;- relative grounds as mentioned in Section 11;- prohibitions contained in Section 13;- absence of consent in writing in Section 14;- Besides, the opponent may also raise
objection U/s 18 (1) with regard to the
proprietorship of the trade mark opposed.
Requirementfrom theopponent

Limitation Period for filing Notice of opposition:

Requirementfrom theopponent

Prescribed Form:

1.5

Requirementfrom theopponent

Prescribed Fee:

1.6

Requirementfrom theopponent

1.7

Requirementfrom theopponent

1.3

1.4

Section 21(1)Within four months from the date of advertisement
or re- advertisement of an application forregistration in the Trademarks Journal.

Opposition required to be fined as per prescribed
form i.e. TM-5

Section21(1) &Rule 47 (1)First Schedule
entry No.12 of
To file a opposition against any advertised markthe Trade Marksprescribed fee is Rs. 2500/-.
Rules 2002
Place of filing:
Rule 8 (1) of theTrade Marks
To be filed in the appropriate office (of application Rules 2002
under opposition)
Contents of TM-5:
Notice of opposition to contain-

Rule 48(1) of
the Trade Marks
Rules 2002(a) In respect of an application against which
opposition is entered –(i) Impugned application no.;(ii) Indication of the goods or services fromthe trade mark application; and(iii) Name of the applicant for the trade marksought to be opposed.
(b) in respect of the earlier mark or the earlier righton which the opposition is based ,(i)where the opposition is based on an earliermark, a statement to that effect and an
indication of the status of earlier mark;(ii) where available, the application number orregistration number and the filing date,including the priority date of the earliermark;(iii) where the opposition is based on an earlier
mark which is alleged to be a well-known
trade mark within the meaning of subPage | 104

section 2 of section 11, an indication tothat effect and an indication of the country
or countries in which the earlier mark is
recognized to be well known;(iv) where the opposition is based on an earlier
trade mark having a reputation within themeaning of paragraph (b) of sub-clause (2)of section 11 of the Act, an indication tothat effect and an indication of whether theearlier mark is registered or applied for;(v) a representation of the mark of the
opponent and where appropriate, adescription of the mark or earlier right; and(vi) where the goods or services in respect ofwhich earlier mark has been registered orapplied for or in respect of which theearlier mark is well known within themeaning of sub-section (2) of section 11 or
has a reputation within the meaning of that
section, the opponent shall when indicating
all the goods or services for which theearlier mark is protected, also indicate
those goods or services on which the
opposition is based.
(c) in respect of the opposing party –(i)where the opposition is entered by the
proprietor of the earlier mark or of theearlier right, his name and address" and an
indication that he is the proprietor of suchmark or right;(ii) where opposition is entered by a licensee
not being a registered user, the name of thelicensee and his address and an indicationthat he has been authorized to enter the
opposition;(iii) where the opposition is entered by the
successor in title to the registeredproprietor of a trade mark who has not yet
been registered as new proprietor, an
indication to that effect, the name andaddress of the opposing party and an
indication of the date on which theapplication for registration of the new
proprietor was received by the appropriate
office or, where this information is notavailable, was sent to the appropriate
office; and(iv) Where the opposing party has no place ofbusiness in India, the name of the
opponents and his address for service inPage | 105

India.
1.8

Requirementfrom theopponent

Verification of the notice of opposition:

Rule 48(2), (3)& (4) of the
The notice of opposition shall be verified at the foot Trade Marksby the opponent or by authorized person who is Rules 2002
acquainted with the facts of the case.
The person verifying shall state specifically byreference to the numbered paragraphs of the noticeof opposition, what he verifies of his own
knowledge and what he verifies upon information
received and believed to be true.
The verification shall be signed by the person
making it and shall state the date on which and theplace at which it was signed.

1.9

Requirementfrom theapplicantFiling of counter statement by the applicant:

1.10

Office action

Abandonment of application for not filing of Section 21 (2) ofcounter Statement
the Trademarks
Act 1999
If within the period of two months from the date ofreceipt of the copy of the notice of opposition, theapplicant does not file counter statement against thenotice of opposition, he shall be deemed to haveabandoned his application and an order to the effectshall be issued.

2.

OfficeActionAfter receiving of the Application for opposition
the office required to check the documents andcomply with some other formalities.

2.1

OfficeActionFormality Check

Section 21(2),Rule 49 & item
The applicant shall file a counter statement in Form
14 of First
TM-6 at the appropriate office.
Schedule of the
The prescribed fee is Rs. 1000/-.
Trade Marks
The limitation to file counter statement is within Rules 2002
two months from the date of receipt of the copy ofthe notice of opposition.
Rule 49(2) of
The counterstatement shall be verified in the same the Trade Marksmanner as the notice of opposition.
Rules 2002

The notice of opposition is received by the Cashsection. The Cash Section will check whether
correct fee is paid. If the fee is correct, then it willenter the appropriate fee code against the trade
mark number and forward the notice of opposition
to the Tribunal Section.
The Tribunal Section shall attach the notice of
opposition with physical file of the application
opposed and arrange the same in order.
Page | 106

2.2

OfficeActionService of notice of opposition upon the applicant:Section 21(2) of
the Trademarks
The entry as to the notice of opposition shall be
Act 1999
made in the ‘Tribunal’ module of the Trade Marks
Automation System (TMAS).
The copy of the notice of opposition along with thesystem generated letter shall be served by the officeof the trademark registry, upon the applicant forregistration.

2.3

OfficeActionService of counter statement upon the opponent

Section 21 (3) of
the Trademarks
The entry as to the counter statement shall be madeAct 1999
in the ‘Tribunal’ module of the Trade Marks
Automation System (TMAS).
A copy of the counter statement along with thesystem generated letter shall be served by the officeof the trademark registry, upon the opponent

3.

3.1

Requirement Mode of evidence
from theapplicant/opp Evidence to be given on affidavits. The Registrar
may, in his discretion, allow oral evidence also.
onent inrespect ofEvidence

Affidavits
The Affidavits shall –- be duly stamped;- be headed in the matter or matters to which
they relate;- be drawn up in the first person;- be divided into paragraphs;- be consecutively numbered; and eachparagraph shall, as far as practicable, be
confined to one subject.

Section 129 of
the Trade Marks
Act, 1999

Rule 116 of theTrade Marks
Rules 2002

Every affidavit shall –-state the description and the true place ofabode of the person making the same;bear the name and address of the person
filing it;
State on whose behalf it is filed.

Where two or more persons join in an affidavit,
each of them shall depose separately to such facts
which are within his personal knowledge and thosefacts shall be stated in separate paragraphs.
Affidavits shall be taken -in India, before any court or person havingby law authority to receive evidence, orPage | 107-

before any officer empowered by such court
as aforesaid to administer oaths or to takeaffidavits;
in any country or place outside India, before
a diplomatic or consular officer, within themeaning of the Diplomatic and Consular
Officers (Oaths and Fee) Act, 1948 (41 of
1948), of such country or place or before anotary public or before a Judge orMagistrate, of the country or place.

The person before whom an affidavit is taken shallstate the date on which and the place where thesame is taken and shall affix his seal, if any, or theseal of the court to which he is attached thereto andsign his name and description at the end thereof.
Alterations and interlineations shall, before anaffidavit is sworn or affirmed, be authenticated by
the initials of the person before whom the affidavit
is taken.
Where the deponent is illiterate, blind or
unacquainted with the language in which theaffidavit is written, a certificate by the person
taking the affidavit that the affidavit was read,translated or explained in his presence to thedeponent, that the deponent seemed perfectly tounderstand it and that the deponent made hissignature or mark in his presence, shall appear in
the jurat.
3.2

Requirementfrom theopponent

Filing evidence in support of opposition:

Rule 50 (1) of
the Trade Marks
Any evidence in support of opposition must be filed
Rules 2002
within two months from the date of receipt of acopy of the counterstatement.
The Registrar may, on a request on form TM-56,
extend the period of filing to a period not exceeding
one month in aggregate.
Within the aforesaid time, the opponent must either
file evidence or may rely on the facts already statedin the notice of opposition, in which case he must
intimate the same in writing to the Registrar and to
the applicant.
The copies of any evidence filed by the opponent
must be delivered by him to the other party and awritten intimation thereof must be given to theRegistrar.

Page | 108

3.3

OfficeActionAbandonment of opposition for not filing ofevidence in support of opposition:
Rule 50 (2) of
the Trade Marks
In case the opponent neither files evidence in Rules 2002
support of opposition nor intimates as prescribed,
he shall be deemed to have abandoned his
opposition, in which case an order to the effect shallbe issued to the parties.

3.4

Requirementfrom theapplicantFiling evidence in support of application:

Rule 51 of theTrade Marks
The applicant must file evidence, if any, in support
Rules 2002
of application within two months after the receipt
by him of the copies of affidavits in support of
opposition or of the intimation that the opponent
does not desire to adduce any evidence in supportof his opposition.
The Registrar may, on a request on form TM-56,
extend the period of filing to a period not exceeding
one month in aggregate.
Within the aforesaid, the applicant must either fileevidence or may rely on the facts already stated in
the counterstatement or on the evidence already leftby him in connection with the application, in whichcase he must intimate the same in writing to theRegistrar and to the opponent.
The copies of any evidence filed or relied upon by
the applicant must be delivered by the applicant to
the other party.

3.5

Requirementfrom theOpponent

filing evidence in reply by opponent:

Rule 52 of theTrade Marks
The opponent may, within one month from theRules 2002
receipt by the opponent of the copies of theapplicant's affidavit, file evidence in reply, if any.
The evidence shall be confined to matters strictly in
reply.
The Registrar may, on a request on form TM-56,
extend the period of filing to a period not exceeding
one month in aggregate.
The copies of evidence in reply, if any filed, must
be delivered by the opponent to the applicant.

3.6

Requirementfrom theapplicant/opp
onent inrespect ofEvidence

Filing of further evidence

Rule 53 of theTrade Marks
The Registrar may, at any time, give leave to either
Rules 2002;
the applicant or the opponent to submit any further
entry 58 of First
evidence upon such terms as to costs or otherwise
Schedule ofas he may think fit.
Trade Marks
Note:
Rules, 2002
Further evidence may be filed by filing an
Page | 109

Interlocutory Petition (IP) with fee of R. 2500/Copies of IP and all supporting documents must be
served on the other party and an acknowledgement
or proof of delivery be obtained.
Hearing shall be fixed on IP. The Hearing Officer
shall hear submissions of both parties for or against
the IP and shall dispose of the petition as per
trademarks law & practice.
In case the Hearing Officer allows the IP and grants
the leave to the petitioner to submit any evidence ortakes the evidence already submitted with the IP, on
record, the other party shall also be given an
opportunity to file evidence in rebuttal within such
period as may be allowed by the Hearing Officer.
3.7

Requirementfrom theapplicant/opp
onent inrespect ofEvidence

Exhibits

Rule 54 of theTrade Marks
Copies of exhibits to affidavits, if any, shall be sent
Rules 2002
to the other party on his request and at his expense,
or, if the same cannot conveniently be furnished,
the originals shall be left with the Tribunal Sectionof the office of the trademarks registry where they
can be inspected by the other party.
The original exhibits shall be produced at thehearing unless the Hearing Officer otherwise
directs.

3.8

Requirement Translation of documents
Rule 55 of thefrom theTrade Marks
applicant/opp Where any document relied upon is in a language Rules 2002
other than Hindi or English, an attested translation
onent

thereof in Hindi or English shall be furnished in
duplicate.
3.9

Requirement Request for Extension of time:from theapplicant/opp An application for extension of time under section
131 shall be made in Form TM-56 with fee of Rs.
onent

3.10

OfficeActionSection 131 of
the Trade Marks
Act 1999 andRule 105 of the
500/.
Trade
Marks
Rules
2002
If the Registrar is satisfied, on application made to
him in the prescribed manner and accompanied by
the prescribed fee, that there is sufficient cause forextending the time for doing any act (not being atime expressly provided in this Act), whether thetime so specified has expired or not, he may,subject to such conditions as he may think fit toimpose, extend the time and inform the parties
accordingly.
Digitization of record
The notice of opposition, the counterstatement, theevidence filed & other application/petitions orPage | 110

replies thereto submitted by the parties shall be
digitized & uploaded in the TMAS and shall beelectronically integrated with the relevant records of
opposition proceedings, concerned. If exhibits arealso submitted with the affidavit, the party
concerned will also be required to submit in CD
ROM or email the electronic copy of exhibits
reduced in non editable colored PDF file format.
4.

OfficeAction in
Respect ofHearing

After completion of the formality check andsubmission of the evidences hearing is fixed torepresent their cases by the opponent as well as
applicant.

4.1

OfficeActionFixing Hearing of cases:

Rule 56 (1) of
the Trade Marks
Upon completion of the evidence stage, theRules 2002
Tribunal Section shall generate the hearing noticefrom the Tribunal (TOP) module of the TMAS,
mentioning therein the first date of hearing. The
hearing notices so generated shall be sent to theparties or their authorized agents of the applicant or
the opponent who are presently on records, as thecase may be.
The date of hearing shall be for a date at least one
month after the date of the first notice.
A cause list in respect of cases fixed for hearing
shall be prepared on monthly basis. The cause list
shall be displayed on the notice board and will be
put up on office website.
Within fourteen days from the receipt of the first
notice, any party who intends to appear shall so
notify by submitting a Form TM-7. Any party whodoes not so notify he may be treated as not desiring
to be heard and the matter may proceed
accordingly.
The hearing will be conducted by the Hearing
Officer as per the cause list.

4.2

OfficeActionAdjournment/ Abandonment of application for nonappearance at the date of hearing
In case the applicant is not present on the first dateof hearing and has not notified his intention toattend the hearing in Form TM-7, the Hearing
officer shall adjourn the matter whether or not any
application for adjournment is filed.

Rule 56 (3) of
the Trade Marks
Rules 2002

If the applicant is not present on the adjourned dateof hearing and has not notified his intention toattend the hearing in Form TM-7, the application
may be treated as abandoned.
Page | 111

4.3

OfficeActionAdjournment/Dismissal of opposition on nonappearance at the date of hearing :In case the opponent is not present on the first dateof hearing and has not notified his intention toattend the hearing in Form TM-7, the Hearing
officer shall adjourn the matter whether or not any
application for adjournment is filed.

Rule 56 (4) of
the Trade Marks
Rules 2002

In case the opponent is not present on the adjourned
date of hearing and has not notified his intention toattend the hearing in Form TM-7, the opposition
may be dismissed for want of prosecution.
4.4

Requirementfrom theapplicant/opp
onent inrespect ofAdjournment
OfficeActionconcept

4.5

Requirementfrom theapplicant/opp
onent inrespect ofCorrection oferror oramendment

Request for adjournment of hearing:

Rule 105 of theTrade Marks
A request for adjournment of hearing shall be made Rules 2002
in Form TM-56 with fee of Rs. 500/.
In every case of adjournment the Hearing Officer
shall fix a day for further hearing of the case and Rule 56 (5), (6)shall make such order as to cost occasioned by the & (7) of theTrade Marksadjournment as he thinks fit.
Rules 2002
The fact that the agent or advocate on record of aparty is engaged in another court shall not be aground for adjournment.
Where illness of legal practitioner or an agent or his
inability to conduct the case for any reason is put
forward as a ground for adjournment, the Hearing
Officer may refuse to grant the adjournment unless
he is satisfied that the legal practitioner or an agent,as the case may be, could not have engaged anotheragent or legal practitioner in time.
Correction of error or amendment:

Section 21 (7) of
the Trade Marks
A correction of any error in or any amendment of a
Act 1999
Notice of Opposition or a counterstatement may beallowed by the Hearing Officer on such terms as hethinks just.
A request for correction of error in or in connection
with the application for registration of trademarks,
or a request for amendment of application may also
be filed by the applicant, which includes division ofa multiclass application.

Section 22 of
the Trade Marks
Act 1999; Rule104 of the Trade
Marks Rules,
Any request for amendment shall be filed on form
2002
TM-16 with a fee of Rs 500/-.
For division of a multiclass application, request
shall be filed on form TM-53 with fee of Rs 1000/and multiples of Rs 3500/- as per number of
additional classes being created out of this TM-53.
Page | 112

A new class with new items of goods/services is not
permissible.
Note:
The proper course would be to send a copy of any
such request to the other party and to invite
objections, if any. A hearing should be fixed andthe parties be heard before disposing of the request.
OfficeAction4.6

The decision shall be communicated to both parties
and the same shall be incorporated in the relevant
modules of TMAS. In case the request is allowed,
the application, the notice of opposition or
counterstatement shall stand amended or correctedaccordingly and the matter will proceed further.
Decision in the matter

OfficeActionOn the date fixed for hearing the Hearing officer Rule 56 (8) ofshall hear the submissions of the parties.
the Trade Marks
In case any party desires to file written arguments, Rules, 2002
the Hearing Officer shall allow the same to be taken
on record.
After conclusion of the hearing the Hearing officer
shall give his decisions along with facts andmaterials considered by him in arriving at such Rule 56 (9) ofdecisions, at the earliest.
the Trade Marks
The decision of the Hearing Officer shall be Rules, 2002
communicated to the parties concerned as perprocedure & practice of the Trademarks Registry
and shall be incorporated in the ‘decision process’of ‘opposition’ module of the TMAS and the statusof opposition & application opposed shall be
updated accordingly.

Section B: Rectification of Register
A request under section 47 may be filed before tribunal (the Registrar or the IPAB) for
rectification of register by removing the mark for non-use or under section 57 or 58 forrectification of/ correction of register.
Sr.
No.

General Description

1.
1.1

Concept

Who may apply for Rectification of a registered
Trade Marks
Who may file a rectification Petition
Any person may make an application before theRelevant
provision of the
Act & Rules

Section 47, 57, 58,
59, 60, 68, 77 of theTrade Marks Act
Page | 113

Registrar of trademarks or before the Appellate 1999
Board (IPAB), for removal of a registeredtrademark or for cancelling or varying theregistration of the trademark and for rectification of
the Register of trademarks, as such.
Aforesaid rectification of register may arise out of
the following procedures under the Trade Marks
Act 1999(i) Under Section 47, a trade mark which is not
used within five years of its registration
becomes liable for removal either completely
or in respect of those goods or services forwhich the mark has not been in use and any
person may make an application for removalof a registered trademark on this ground.
(ii) Under Section 57(1) & (2) a “person
aggrieved” may make an application forcanceling or varying the registration of a trade
mark on the ground of any contravention or
failure to observe the conditions entered on theregister or by absence or omission from theregister any entry or by any entry made in theregister without sufficient cause, or by any
entry wrongly remaining on the register, or by
any error or defect in any entry in the register.
(iii) Under Section 68 a “person aggrieved” maymake an application for removing theregistration of a collective trade mark(iv) Under Section 77 a “person aggrieved” maymake an application for cancellation or forvarying the registration of a certification trade
mark(v) The Tribunal (the Registrar or the Appellate
Board) of its own motion after giving a noticeto the parties concerned and giving them an
opportunity of hearing, make any order as
above. – Section 57(4)(vi) On application made in the prescribed mannerby the registered proprietor, the Registrar of
trademarks may correct any error in the name,address or description or any other entry
relating to the trade mark ;enter any change in
the name, address or description of theregistered proprietor; cancel the entry of a
trade mark in the register; strike out any goods
or classes of goods or services in respect of theregistered mark and make consequential
amendments or alterations in certificate ofregistration.- section 58.
(vii) Alteration of the registered trade mark by the
Page | 114

registered proprietor– section 59.
(viii) Change of classification of goods to alignwith any revised classification –section 60
An application for removal of the registeredtrademark or for cancelling or varying theregistration of the registered trademark and forrectification of the Register of trademarks under
Section 47 or 57 are made by an aggrieved person
ordinarily other than the registered proprietor.
These applications are contested matters and the
Tribunal Section deals with such matters.
Person aggrieved :“persons who are aggrieved are persons who are insome way or the other substantially interested inhaving the mark removed from the register or
persons who would be substantially damaged if themark remained
1.2

Requirementfrom theapplicantApplication for rectification of register where thevalidity of registration is questioned

Section 125 of theTrade Marks Act
1999

Where in a suit for infringement of a registeredtrade mark the validity of the registration of theplaintiff's trade mark is questioned by the defendantor where in any such suit the plaintiff questions thevalidity of the registration.
of the defendant's trade mark, the issue as to thevalidity of the registration of the trade markconcerned shall be determined only on an
application for the rectification of the register and,notwithstanding anything contained in section 47 or
section 57, such application shall be made to theAppellate Board and not to the Registrar.

Office Action

1.3

Concept

Where an application for rectification of theregister is made to the Registrar under section 47 or
section 57, the Registrar may, in case the validityof registration is questioned by opposite party inany suit or proceeding before any court, refer theapplication at any stage of the proceedings to theAppellate Board.
Removal of registered trademark for non use, under
Section 47
The application for this purpose may be made on
either of the following grounds:(a) the trade mark was registered without any
bonafide intention that it should be used inrelation to those goods/services, and that there
has in fact been no bonafide use of the trade
mark upto a date three months before the date
Page | 115

of application, or(b) A continuous period of five years from theactual date of registration or longer has elapsed
during which there was no bonafide use thereof
up to three months before the date ofapplication.
“bonafide use” means use that is honest andgenuine and “not pretended” -substantiality ofuse judged by ordinary commercial standards,
depending upon the nature and circumstancesof the case may be relevant to determine
whether it was in fact bonafide”
The period of five years under section 47(1)will commence from the date on which thetrade mark is actually entered in the register.
This is different than the date of application forregistration of the trademark being the date ofregistration in view of Section 23(1) of theSection 46 of theTrade Marks Act 1999
Trade Marks Act

However the registration may not be removed 1999
under this Section if(a) A company is about to be formed & registeredunder the Companies Act and the registered Section 47(3) of the
proprietor intends to assign the trade mark to Trade Marks Act
1999
that company; or(b) Proprietor intends it to be used by a person to
be registered as the registered user, after theregistration of the mark.
(c) If alleged non-use of a trade mark is due tospecial circumstances in the trade, which
includes restrictions on the use of the trade
mark in India imposed by any law or regulationand not to any intention to abandon or not to
use the trade mark in relation to the goods orservices to which the application relates.
Partial removal of a registered trademark
Where in relation to any goods or services inrespect of which a trade mark is registered and aperson has been permitted under section 12 toregister an identical or nearly resembling trade
mark in respect of those goods/services, on
application by that person for removal of the othertrademark due to its nonuse, the tribunal may
impose on the registration of the first-mentioned
trade mark such limitations as it thinks proper for
securing that that registration shall cease to extend
to such use.
If the registration of a trade mark covered a wide
Page | 116specification of goods and it is found that the trade
mark has been actually used only in relation tosome of those goods, it is open to the Registrar torequire the specification of goods or services forwhich the trade mark was registered to be rewritten
in order to achieve the required degree ofrectification.
1.4

Concept

Canceling or varying the registration of a trade Section 57 (1) &(2) of the Trade
mark under Section 57(1)&(2)Marks Act 1999

An application for canceling or varying theregistration of a trade mark may be made on the
ground of any contravention or failure to observe
the conditions entered on the register or by absenceor omission from the register any entry or by any
entry made in the register without sufficient cause,or by any entry wrongly remaining on the register,or by any error or defect in any entry in the register.
contravention on failure to observe a condition“Contravention on failure to observe a condition”,
is attracted only if there is non-compliance orviolation of any conditions. However it does notextend to “limitations” as defined in section 2(1)(l).
For example when a trade mark is registered withlimitations as to colour under section 10, the use of
the mark in any other colour will not be considered
to constitute contravention of any condition. On thecontrary if there is an express condition imposed
against use of a particular colour or combination ofcolours in the label of the trade mark, it would be a
condition of registration and accordingly theviolation of such condition may attract rectification
under section 57(1).
absence or omission from the register of any entry
The ground of “absence or omission” of any entry
in the register may be invoked against a trade markwhich has been registered without a condition,
whereas the trademark ought to have beenregistered with such condition.
entry made in the register without sufficient cause
If the registration is found to have been made incontravention of any of the provisions of theTrademarks Act or the Rules, the registration may
be challenged as “made without sufficient cause”
wrongly remaining on the register
The existence of a registered trademark or its entry
on the register can be challenged, if it is establishedthat the registration of trademark erroneously
continues.
Page | 117

The relevant date in such cases is the date ofapplication for rectification.
For example, where a mark has become due forrenewal, and the registered proprietor has notcomplied with the provisions concerning renewal,
the registration lapses and as such the trade mark is
wrongly remaining on the register.
1.5

Concept

Additional grounds for removal of registration of Section 68 of theTrade Marks Act
collective mark1999

The registration of a collective mark may also be
removed from the register on the ground(a) that the manner in which the collective markhas been used by the proprietor or authorised user
has caused it to become liable to mislead the public
as a collective mark; or(b) that the proprietor has failed to observe, or tosecure the observance of the regulations governing
the use of the mark.
Note:"Authorised user" means a member of an
association authorised to use the registeredcollective mark of the association.
Use of a collective mark by an authorised user toshall be deemed to be the use by the registeredproprietor thereof.
1.6

Concept

Cancellation or varying of registration of Section 77 of theTrade Marks Act
certification trade marks
1999
on the application of any aggrieved person andafter giving the registered proprietor an opportunityof opposing the application, an order for expunging
or varying any entry in the register to a certification
trade mark, or for varying the regulations may bepassed, on any of the following grounds, namely:(a) that the proprietor is no longer competent, inthe case of any of the goods or services inrespect of which the mark is registered, tocertify those goods or services;(b) that the proprietor has failed to observe any
provisions of the regulations to be observed on
his part;(c) that it is no longer to the public advantage thatthe mark should remain registered;(d) that it is requisite for the public advantage that
if the mark remains registered, the regulations
should be varied.

1.7

Requirementfrom theapplicantFiling application for rectification of register
An application under Section 47, 57, 68 or 77 forthe making, expunging or varying of any entry

Rule 92 of theTrade Marks Rules
2002
Page | 118

relating to a trade mark or a collective mark or
certification trade mark, in the register shall bemade in triplicate in Form TM-26, or in Form TM43 (in case of collective trademark or certification
trademark) and shall be accompanied by statementin triplicate setting out fully the nature of theapplicant's interest, the facts upon which he bases
his case and the relief which he seeks. Where theapplication is made by a person who is not theregistered proprietor of the trade mark in question,
the application and the statement aforesaid shall be
submitted to the Trade Marks Registry in triplicate.
In case there are registered users, such applicationand statements shall be accompanied by as many
copies thereof as there are registered users.
The application shall be verified in the mannerprescribed under clause (i) of sub-rule (c) of rule 48
for verification of a notice of opposition.
1.8

Requirementfrom theRegistered
Proprietor

Further procedure
Within two months or within such further period
not exceeding one month in the aggregate, from thereceipt of the copy of the application forrectification, the registered proprietor shall send tothe office of the Trade Marks Registry from where
the application for rectification was sent, acounterstatement in Form TM-6 in triplicate stating
the grounds on which the application forrectification is contested and if he does so, theTribunal Section of the Trade Marks Registry shallserve a copy of the counterstatement on the person
making the application within one month of thereceipt of the same. The provisions of Rules 50 to
57 of the Trade Marks Rules 2002 (dealing with
filing of evidence & conducting of hearing in
opposition proceeding) shall thereafter apply
mutatis mutandis to the further proceedings on theapplication for rectification.

Rule 93 of theTrade Marks Rules
2002

The Registrar of Trademarks shall not, however,rectify the register or remove the mark from theregister merely because the registered proprietor
has not filed a counterstatement unless he issatisfied that the delay in filing thecounterstatement is willful and is not justified by
the circumstance of the case.
In any case of doubt any party may apply to theRegistrar for directions.
1.9

Office Action

Hearing & disposal
Page | 119

Regarding fixing & conducting hearing,
adjournment of hearing and the disposal of
application for rectification, the procedure as
mentioned earlier in opposition proceeding, shallbe followed.
1.10

Office Action

Digitization:
The application for rectification of the register, thecounterstatement, the evidence filed & otherapplication/petitions or replies thereto submitted by
the parties shall be digitized & uploaded in the
TMAS and shall be electronically integrated withthe relevant records of rectification proceedings,
concerned. If exhibits are also submitted with theaffidavit, the party concerned will also be required
to submit in CD ROM or email the electronic copyof exhibits reduced in non editable colored PDF fileformat.

1.11

Office Action

rectification of register of trademarks by Tribunal Section 57(4) of theTrade Marks Act“of its motion under Section 57(4)1999

The tribunal, of its own motion, may, after giving
notice in the prescribed manner to the parties
concerned and after giving them an opportunity of
being heard, make any order for canceling orvarying the registration of a trade mark.
1.12

Office Action

Procedure for rectification of register of trademarks Rule 95 of theTrade Marks Rules
by Tribunal under Section 57(4)2002

The tribunal section of the Trademarks registry
shall send a notice in writing to the registeredproprietor and to each registered user if any, stating
the grounds on which the Registrar of trademark
proposes to rectify the register. The notice should
also specify the time, not being less than one monthfrom the date of such notice, within which an
application for a hearing shall be made.
If the person so notified does not send a statementin writing setting out fully the facts upon which herelies to meet the grounds stated in the notice orapplies for a hearing, he may be treated as notdesiring to take part in the proceedings.
In case a reply to the notice issued under Section
57(4) has been received, a hearing shall be fixed
and a hearing notice shall be sent as per procedure
to the registered proprietor & to each registereduser, if any, stating therein the date & time of thehearing.
On the date fixed for hearing, the hearing officer
shall hear the submissions of the parties present andPage | 120

peruse the records.
The Hearing Officer shall dispose of the noticeunder Section 57(4) as per trademark law practice& procedure of the trademarks registry by giving
the grounds of his decision.
The decision of the Hearing Officer shall be
communicated to the parties concerned.
The decision of the Hearing Officer shall beincorporated in relevant module of TMAS and thestatus of the registered trademark shall be updated
accordingly.
1.13

Office Action

Digitization
The notice issued under section 57(4) for
rectification of the register, the reply of the notice,
the evidence, if any, filed & otherapplication/petitions submitted on behalf of theregistered proprietor shall be digitized & uploadedin the TMAS and shall be electronically integrated
with the relevant records of the registeredtrademark concerned. If exhibits are also submittedwith the affidavit, the party concerned will also be
required to submit in CD ROM or email theelectronic copy of exhibits reduced in non editable
colored PDF file format.

Section C: Review
Section 127 (c) empowers the Registrar on an application made in prescribed manner, to review
his own decision. Rule 115 provides that an application to the Registrar for the review of his
decision shall be made on form TM-57 within one month from the date of such decision orwithin such further period not exceeding one month thereafter as the Registrar may, on request
allow. The review application is to be accompanied by a statement setting out the grounds onwhich the review is sought. If the decision sought to be reviewed concerns any other person, thereview application and the statement should be filed and the Registrar will dispose of thereview application after giving the parties an opportunity of hearing.
Sr.
No.

General Description

1

The registrar may, on an application made inprescribed manner, review his own decision.

Relevant
provision of the
Act & Rules

Page | 121

1.1

Concept

Section 127 (c) of
Who may apply:
Any party to the proceeding aggrieved by the the Trademarks Act
1999
impugned decision.

1.2

Concept

Grounds of Review:
The trademarks law doesn’t provide for the
grounds of review, however, It is a well establishedpractice to follow the provisions in section 145 of
the Civil Procedure Code, read with rule 1 under
Order 47, which limits the review to the followingclasses:(a)where there is discovery of new andimportant matter or evidence;(b) where there is a mistake or error apparent on
the face of the record; and(c) for any other sufficient reason.
While the circumstance in (a) above would
obviously justify a review ‘an error apparent on theface of record’ must be such an error which must
strike one on merely looking at the record andwould not require any long drawn process ofreasoning on points where there may beconceivably two opinions.
(Meera Bhanja vs. Smt. Nirmala Kumari Chaudhary, AIR
1995 SC 455)

The words “any other sufficient reason” have beeninterpreted as “reason sufficient on grounds at least
analogous to those specified immediately
previously” i.e. excusable failure to bring to thenotice of the court new and important matters or
error apparent on the face of the record.
(Maranmar vs. Mar Paulose, AIR 1954 SC 526)

A decision means a concluded opinion. An order
granting extension of time is not of such a nature. It
is not such a decision as to give the aggrieved
person a right to appeal. It is just a procedural orderin aid of proceedings Similarly an order refusing
extension of time to file evidence in support of
opposition is not a decision and hence notreviewable.
(Ajit Kumar Rath V. State of Orissa (1999)9 SCC 596)

1.3

Rule 115 of theRequirement Prescribed form:
Trademarks Rulesfromthe
TM-57 to be accompanied by a statement setting 2002
Applicantforth the grounds on which the review is sought.
In case, the decision sought to be reviewed
concerns any other person, the review applicationand the statement should be filed in triplicate.
Page | 1221.4

Requirement Prescribed fee:from
the Rs. 2000/Applicant

1.5

Limitation:
One month from the date of the decision sought tobe reviewed or within such further period notexceeding a month thereafter as the Registrar myon request allows.

1.6

Office Action

Service of documents:
In case, the decision sought to be reviewed
concerns any other person, office is required tosend a copy of the application and statement to theother person concerned.

1.7

Office Action

Entry 57 of First
Schedule of theTrademarks Rules
2002
Rule 115 of theTrademarks Rules
2002

Rule 115 of theTrademarks Rules
2002

Hearing and Decision:
Rule 115 of theAn application for review of decision issued by the Trademarks Rules
Registrar is generally considered by the same 2002
officer who passed the impugned decision. This issubject to the specific provision contained in
section 4 of the Trademarks Act 1999 empowering
the Registrar to transfer a case to another Hearing
Officer.
A hearing notice shall be issued to the applicant forreview and other concerned person, if any, stating
therein the date & time for hearing.
The Hearing Officer shall hear the submissions of
the party or parties peruse the relevant records andmay reject or grant the application for review,
either unconditionally or subject to any conditions
or limitations, as he thinks fit.
1.8

Office Action

Digitization
The review application and other relevant records
relating thereto shall be digitized, uploaded andintegrated with the relevant application or
opposition as the case may be.

Page | 123

Chapter V
Pre-Registration Amendment
This chapter deal with the provision related to correction of data entry errors of request related
to amendment to data before registration of the Trade Marks, issuance of corrigenda in case oferroneous advertisement of the applied Trademarks, re advertisement of the applied trademarks
in case of major errors in advertisement, and correction in registration certificate. The Pre –Registration Amendment Section (PRAS) is headed by Senior Examiner of Trade Marks andassisted by other officials depending upon the quantum of work. This section will function in all theoffices of Trade Marks Registry.

Sr.
No.

General Description

Relevant
provision of the
Act & Rules

1.

Concept

A correction of any errors in the application of any Section 22 Ruleamendment in the application is permitted by the Trade 41
Marks Act 1999 and Rules 2002.

1.2

Requirementfrom theApplicantAn applicant for the registration of the Trademark may,before the registration of the trade mark, apply in Form16 accompanied by prescribed fee and supporting
document, if required, for correction of any errors in his
application of amendment in the application.

1.3

OfficeActionThe section in charge shall ensure that the request madeon form TM-16 are digitized and uploaded in thesystem. Thereafter he/she shall dispose the request inaccordance with Trade Marks Act and rules andincorporate the amendments in the application.

1.4

Concept

This provision is made for correction mere clericalerrors in the application.
No request for correction / amendment shall be allowed
which seeks substantial alteration in the application forregistration of trade mark.
Any amendment in the applied Trademark which may
consider substantial alteration, proprietor details,
specification of goods and services (except deletion ofsome items), statement as to the use of the mark shallnot be permitted, however request for amendment in the
proprietorship of the trade mark on the basis of valid
assignment or transmission, change in address of theapplicant or in the address for service, deletion orconfinement of any item in the specification of
goods/services, confinement/limitation in the area ofsales of goods/services, division of multiclassapplication, etc. can be allowed.

Page | 1241.5

OfficeActionThe officer assigned this work shall allow / refuse therequest for correction / amendment made on form 16
through the system. In case the request is allowed, theofficer shall update the application details accordingly
by putting remark to that effect in the system.
A request for correction / amendment in the application
filed during the show-cause hearing or during
opposition proceeding, shall be disposed by concern
hearing officer, though the same shall be given effect inthe system by the PRAS section.

1.6

Request for correction of Data Entry Errors
OfficeActionIn case where there is an error/s in the data entry andrequest for the correction is made for the same, theofficer assigned this work shall verify the facts with therelevant original documents whether available on paper
or already scanned and uploaded in the system. In caseoriginal document is not available, a certified andauthentic copy of the document shall be called from theapplicant.
After the verification of relevant document, if officer
satisfied that errors exists, a correction shall be made in
the system along with the remarks top this effect in thesystem by concerned officer.

1.7

Correction of Data after Advertisement
OfficeActionIf any application erroneously advertised in the trade
marks journal due to data entry errors and the same isbrought to the notice, the section In-charge shall
examine the contents on the basis of relevant documents
and if error is found genuine, the section in charge shallmake necessary correction and put his/her remarks inthe system. In case of the correction of errors regarding
the proprietor’s details, the code of the correct
proprietor shall be substituted; significant changes in the
Proprietor’s detail shall not be made without changing
the Code.
In case errors complained of not digitized section Incharge shall forward the matter to EDP for digitization.

1.8

Issuance of Corrigenda or notification or readvertisement
Officer
ActionIn case of error/s in advertisement considered to beclerical, a corrigendum is published.
In case errors in the advertisement considered to be
major such as - relates to the trade mark, proprietorship,
statement of user, class or specification of goods andservices (except spelling mistakes) jurisdiction,
Page | 125

condition or limitation for acceptance/advertisement of
the mark, the section in charge shall proceed to readvertisement of application after written approval fromsupervising officer, thereafter such re advertisement
shall be digitized, uploaded and integrated with theapplication.
1.9

Correction in the Registration Certificate
Officer
ActionOn receipt of complain regarding erroneous registration
certificate, the section in charge shall examine thecontents of the grievances on the basis of relevant
documents and if complaint filed genuine, he/she shalltake back the registration certificate from the applicant /complainant, and will correct the data entry errors by
putting his/her remark in the system.
In case of minor errors in the certificate, aregistration certificate with corrected data shall be
generated and shall be sent to the applicant or his
authorized agent.
However in case of major errors found, as if
registration certificate is generated on the basis ofwrong publication of mark, class, goods/services,
statement of user in Trademarks journal, the section
In-charge shall initiate proceeding under 57(4) after
obtaining approval from competent authority. The
note and approval shall be digitized thereafter
forwarded to Tribunal Section for further
proceeding. The activities of this section will begoverned through a system module.

2.

DIVISION OF APPLICATIONS
Concept

In the Trade Marks Act 1999, a facility for division Proviso
toof application is provided to the applicant.
Section 22, Rule
Under proviso to section 22, if an amendment is 104
made to single application, involving division ofsuch application into two or more applications, thedivided application will retain the date of making
the original application.

2.1

Requirementfrom theApplicantApplicant is required to file request for dividing his
multi class application in to more than one
application as per prescribed form i.e. TM 53 and
fee.

2.2

OfficeActionEach divided application will be treated as separate
application, with the same filing date. A separate
new serial number is allotted to the divided
application and they will be linked by crossreference with the initial application.
Page | 126

Chapter VI
Renewal, Assignment/Transmission, Registered User and Post Registration
Changes of Registered User
This chapter deals with the renewals, restorations & post registration amendments in respect ofregistered trademarks. A Renewal, Restoration & Amendment (RR&A) Section is created inevery branch of the Trade Marks Registry for dealing with requests for above purposes.

Sr.
No.
1

General Description

Relevant
provision of the
Act & Rules

Renewal of trademark(s):1.1Concept

Date of registration & period of registration:

1.2

OfficeActionPrior notice as to renewal of trademarks:

1.3

Requirement Application for renewal:
fromtheAn application for renewal of registration of tradeapplicantSection 23(1) &25(1) of the
For the purposes of renewal, the effective date of
Trade
Marks
registration is the date of making of the application.
Act, 1999
The registration of trade mark is valid for a periodof ten years (10 years) from the date of registration
which may be renewed from time to time inaccordance with the provisions of Trade Marks Act& Rule.
Section 25(3) of
the Trade Marks
The Office shall send a notice to the Registered Act, 1999 and
Proprietor on Form O-3 intimating the approaching Rule 64(1) of
expiration of registration of trade mark and the the Trade Markscondition as to the renewal of trade mark.
Rules, 2002
The O-3 notice shall be electronically generated
from the Trade Mark Automation System (TMAS)
and the same shall be dispatched by the Registered
Post so that it is received by the Registered
Proprietor at any date not less than one month andnot more than three months before the expiration oflast renewal of trade mark.
Rule 63(1) of
mark shall be made on Form TM-12 at the the Trade Marks
appropriate office or Head Office of the Trade Rules, 2002
Marks Registry, at any time not more than six
months before the expiration of last registration of
the trade mark.
Where the registration of a trade mark takes more Rule 64(3) ofthan 10 years, namely after the first renewal date, the Trade Marks
the application for the renewal may be made within Rules, 2002
the period of six months from the actual date ofregistration.
Page | 127

1.4

Requirement Who can apply:
fromthe
The application for renewal may be made by aapplicantRule 63(2) of
the Trade Marksperson who is proprietor of the registered trade Rules, 2002
mark or by a person who is his duly authorized
agent.
In case of application by an agent, if not already onrecord, a request for change of address for serviceof the applicant on Form TM-50 along with theduly executed Power of Attorney in his favour shallalso be filed.
Rule 63(4) of
the Trade Marks
In case the renewal application is filed by some
Rules, 2002
person/entity as proprietor different from theregistered proprietor on record or his agent, theapplication may be accepted subject to an affidavit
stating the entitlement of the applicant in respect of
the trademark(s), whereof renewal is applied, theentire chain of title along with supporting
documents.
In case of an application for renewal frommanaging trustee, executors, administrators and thelike, the same be accepted subject to court order(s)or documents of other authority to act on behalf ofthe present proprietor.

1.5

Requirement Prescribed fee for renewal:
fromtheThe fee for renewal is as follows :applicantItems nos. 17,
18, 19 & 20 of
Schedule-Iof
For the renewal of registration of trade mark in a Trade
Marksclass before the expiration of last registration – Rs. Rules, 2002
5,000/-;For the renewal of registration of trade markconsisting of series of trade mark – Rs. 5,000/per mark;For the renewal of registration of trade mark in
respect of goods or services falling in more than
one class (Multi-class application) – Rs. 5,000/- foreach class.
For the renewal of registration of collective trade
mark/ certification trade mark – Rs. 10,000/-.

1.6

Requirement Renewal after expiration of last registration:
ProvisotofromtheSection 25(3) ofIn case the application for renewal is filed within 6
applicantthe Trade Marksmonths from the expiration of last registration, theAct, 1999 andsame shall be accepted subject to payment of aProviso to Rulesurcharge of Rs. 3,000/- on Form TM-10.
65 of the Trade
Marks
Rules,
2002
Page | 128

1.7

Removal & Restoration:
OfficeActionIn case no renewal fee is paid along with thesurcharge within six months from the expiration of Section 25 (4) oflast registration, the mark becomes liable to be the Trade Marks
Act, 1999; Ruleremoved from register.
66 of the Trade
The Registrar has the power to restore the Marks
Rules,
trademark provided an application for restoration of 2002
the same is made on Form TM-13 with theprescribed fee of Rs. 5,000/- accompanied by arenewal application with prescribed fee andsurcharge after six months but within one year fromthe expiration of last registration.
While restoring the trademark, the registrar may
impose such conditions or limitations as he thinks
fit. The registrar shall, while considering the request
for such restoration and renewal, have regard to theinterest of other affected persons.
If case no request for the renewal of registration of
trade mark has been filed on behalf of the registeredproprietor even up to one year after expiration oflast registration of the trade mark, the trade markwill be removed from the Register since the date of
expiration of its last registration irrespective of theactual date of removal.

1.8

OfficeActionAll requests for the renewal filed on Form TM-12,
payment of surcharge filed on Form TM-10 andrequest for restoration filed on Form TM-13 andother documents submitted along with such requests
shall be scanned and uploaded in the system.
The requests for renewal and/or restoration shall beprocessed through the ‘Renewal’ module of Trade
Mark Automated System and as per provisions ofTrade Marks Act, 1999 and Trade Marks Rules,
2002.
Irrespective of the actual date of renewal of aregistered trade mark, the trademark shall berenewed from the date of last expiration of its
registration.
The intimation to the renewal will be generated
from the system, accordingly and shall be sent tothe applicant.
All the renewals done through the system shall besent through the system for publication in the
trademark journal.
In case of any objection to the renewal of registered
Page | 129

trade mark, the Office shall generate a query letter
through the system and send it to the applicant for
the renewal accordingly and shall keep the request
pending till the response of query letter is received.
In case of removal of trademark(s) for non-paymentof renewal fees, a letter notifying the removal of
trade mark shall be sent to the registered proprietor
by post and all removals done during a particularperiod shall be sent through the system, forpublication in the trademark Journal.
2.
2.1.

Assignment &Trademarks
Concept

TransmissionofA

Registered

Assignment & Transmission –1. Assignment or transmission of a trade markrefers to the process by which proprietorship ofa registered trade mark/ trade mark whose
registration is being sought, is passed from one
party to another/ devolves upon the other party,
as the case may be.
2. The right of the registered proprietor to assign a
trade mark for any consideration is recognized.
3. A registered trade mark is assignable ortransmissible with or without the goodwill in
respect of all goods /services or some only ofsuch goods/services for which the mark is
registered.
4. An important change introduced by the new
Trade Marks Act 1999 law is that it enables anunregistered trade mark to be assigned ortransmitted with or without the goodwill of thebusiness.
5. Restrictions are imposed on assignment ortransmission where multiple exclusive rights
would be created in more than one person andalso, to prevent splitting of right on territorial
basis & creating right in different persons indifferent parts of India. However the Registrarof Trade Marks is empowered to approveassignment where he is satisfied that it would
not be contrary to the public interest.
6. Where there is an assignment without goodwillof business, it will not take effect unless theassignor obtains directions of the Registrar of
Trade Marks and advertises the Assignment as
per directions.
7. Assignment of certification trade mark can only
be done with the consent of the Registrar of
Trade Marks.
8. Associated trademarks will have to be assigned

Section 37,38,
39, 41, 42, 43,
44, 45 and Rule
73 of the Trade
Marks Rules
2002

Page | 130together.
9. The Trademark law that provides that if thevalidity of assignment is in dispute, Registrar of
Trade Marks may refuse to register theassignment unless the rights of the parties are
determined by a competent court.
10. Where the assignment involves transmission ofmoney outside India, permission of authority
specified in any law for transmission of money
abroad will have to be produced before recordalof assignment.
2. 2

Requirement Who can assign:from
the Registered proprietor of subsisting trademarks can
Registeredassign his trademarks to subsequent users.
Proprietor

2.3

Requirement
fromtheRegistered
Proprietor
Requirement
fromthesubsequent
Proprietor

2.4

2.5

2.6

Section 37 of
the Trade Marks
Act 1999

What can be assigned/transmitted:
Section 38 of
Any registered trade mark can be assigned or the Trade Markstransmitted with or without goodwill.
Act 1999
Registration of assignments and transmissions:
Section 45(1) of
Any person who becomes entitled by assignment or the Trade Markstransmission to a registered trademark should apply Act 1999
for registration of the assignment/transmission, as
the case may be, in the prescribed manner.

Requirement
fromthesubsequent
Proprietor

Prescribed form(s):An application to register the title of a person who
becomes entitled to a registered trade mark byassignment or transmission shall be made in Form
TM-24.
The assignor & assignee can also make a joint
request to register assignee as subsequent proprietor
in form TM-23.
Requirement Prescribed fee for TM-23/24:
fromthe On application to register a subsequent proprietor insubsequenta case of assignment or transfer of a single trade
Proprietor
mark:

Rule 68 of theTrade Marks
Rules 2002

Items nos. 27 &28 of Ist
Schedule

If made within six months from the date ofacquisition of proprietorship – Rs. 5000/If made after expiration of six months but before 12
months from the date of acquisition of
proprietorship – Rs. 7500/If made after 12 months from date of acquisition of
proprietorship – Rs. 10,000/On application to register a subsequent proprietor of
more than one trade mark registered in the same
name, the devolution of title being the same in eachcase:If made within six months from the date ofacquisition of proprietorshipPage | 131

2.7

For the first mark – Rs. 5000/For every additional mark – Rs. 1000/If made after the expiration of six months but
before twelve months from the date of acquisitionof proprietorship:For the first mark – Rs. 7500/For every additional mark – Rs. 1,500/If made after the expiration of twelve months fromthe date of acquisition of proprietorship:For the first mark – Rs. 10,000/For every additional mark – Rs. 2000/Requirement Contents of application:
Rule 69 and 75
from
the Application must contain full particulars of the of the Tradesubsequent
instrument of title.
Marks Rules
Proprietor
In addition to the above, in respect of assignment of 2002
trademark(s) without goodwill, the application muststate that(a) the trade mark had been or was used in thebusiness in any of the subject goods or services,and(b) the assignment was made otherwise than inconnection with the goodwill of that business.

2.8

2.9

Requirement
fromthesubsequent
Proprietor

Documents required:
Original or duly certified copy of the instrument of
title.
In case, the applicant does not establish his claim Rule 70 of theunder any document or instrument he shall state a Trade Markscase setting forth the full particulars of the facts Rules 2002
upon which his claim to be proprietor of the trade
mark is based, and showing that the trade mark has
been assigned or transmitted to him.
An affidavit in Form TM-18, if the Registrar so
requires.
Requirement Requirement of directions of Registrar in case of Section 42 of
the Trade Marks
from
the Assignment without goodwill:
Act 1999; Rule
subsequent
Assignmentoftrademark(s)without
goodwillshall
74 of the Trade
Proprietor
not take effect unless the assignee, not later than the Marks Rules
expiration of six months from the date on which the 2002
assignment is made or within such extended period,
if any, not exceeding three months in the aggregate,
as the Registrar may allow, applies to the Registrar
for directions with respect to the advertisement of Rule 75 of thethe assignment, and advertises it in such form and Trade Marksmanner and within such period as the Registrar may Rules 2002
direct.
In case of an application for assignment oftrademark(s) without goodwill, a copy of thedirections (infra) of the Registrar to advertise theassignment and such proof, including copies ofPage | 132

advertisements or otherwise, as required by theoffice, to show that the directions have been
fulfilled for in case the directions have not been
fulfilled, the application will not be proceeded
further.
2.10

Requirement Prescribed form(s) for request for direction/fromthe extension:
subsequent
The application for directions of the Registrar of
Proprietor

2.11

Concept

Section 42 of
the Trade Marks
Act 1999; Rule
74 of the Trade
Trade Marks shall be made in Form TM-20 and it Marks Rules
shall state the date on which the assignment was 2002
made. A request for an extension of the period,
within which the application for Registrar’s
direction may be made, shall be made in Form TM21. The application shall give particulars of theregistration in the case of a registered trade mark,and in the case of an unregistered mark shall show
the mark and give particulars including user of theunregistered trade mark that has been assigned
therewith.
Restrictions against creation of multiple exclusive Sections 40 &41 of the Traderights:Marks Act 1999
The trade marks law lays down restrictions on
assignment or transmission of trademarks so as toprevent splitting of rights over the trade mark on aterritorial basis and creating exclusive rights on
different persons to use the trademark in different
parts of India.
However, the Registrar of Trade Marks has been
empowered to approve such assignment, if he issatisfied that it would not be contrary to public
interest.

2.12

Requirement
fromthesubsequent
Proprietor

OfficeActionRegistrar’s certificate/notification of approval in Rule 77 of thecases of multiple exclusive rights
Trade Marks
The proprietor of a registered trade mark who Rules 2002
proposes to make such assignment shall make anapplication on form TM-17 (if multiple exclusive
rights are likely to be created in different persons inview of their use of trademark for same/similar
goods or services) or on form TM-19 (if multiple
exclusive rights are likely to be created in different
persons in view of their use of trademark in
different parts of India ), together with a statementof case setting out the circumstances and a copy of
any instrument or proposed instrument effecting theassignment or transmission.
A written approval or disapproval of the proposed
assignment will be given after hearing the applicant
Page | 1332.13& any other person considered to be interested in
the transfer. Where an approval has been given,application for registration of the title is to be madewithin six months from the date of approval.
Requirement Registrar’s consent in cases of assignment / Section 43 offrom
the transmission of Certification trademark
the Trade Marks
subsequent
Act 1999; Rule
Proprietor
Certification trademarks can be assigned only after 140(2) the Tradethe consent of the Registrar is obtained thereafter Marks Rules
2002.
follows the normal process for assignment.
The application for consent must be made on form
TM-62

2.14

Requirement
fromthesubsequent
Proprietor

Prescribed Fee for TM-17/19/20/21/62:
Items nos. 23,
Fee for TM-17/19/20
24 & 25of Ist
For the first mark – Rs. 2500/Schedule.
For every additional mark – Rs. 500/Fee for TM-21 for direction of the Registrar foradvertisement of assignment without goodwill oftrademark in use in respect of devolution of title Not exceeding one month – Rs. 500/Not exceeding two month – Rs. 1000/Not exceeding three month – Rs. 1500/Fee for TM-62 – Rs. 1000/-

2.15

OfficeAction

Disputes regarding assignment/transmission:
Section 45(3) ofIn case of dispute between the parties as to the the Trade Marks
validity of assignment/transmission of trademark(s), Act 1999
the Registrar may refuse to register theassignment/transmission until the rights of theparties have been determined by a competent Court.

2.16

OfficeActionAll
requestsfortherecordalofassignment/transmission and other documents
submitted along with such requests shall be scanned
and uploaded in the system. The documents being
currently received at the Office of the Trade Marks
Registry shall be digitized and uploaded in thesystem by the EDP Section, while all pending
requests and accompanied documents submittedwith such requests shall be digitized by A&R
Section.
The data entry of a request for Recordal of
assignments/transmission shall be made in ‘PR
Entry’ of POST REGISTRATION module of
TMAS. Thereafter a scrutiny of the request andscrutiny as to existence/nonexistence of supporting
documents shall be made. Then the request shall be
examined & disposed of in terms of relevant
Page | 134

provisions of the Trade Marks Act, 1999 and Trade
Marks Rules, 2002.
The Officer-in-Charge of A&R Section while
disposing the aforesaid requests for the correction
or amendment shall take into account the following
facts :
1.

Whether the trade mark in respect of which
the request has been filed, is renewed andvalid;

2.

Whether the person shown to be assignor of
the trademark in the assignment deed, or the
person from whom the devolution of title in
the trademark is claimed, appears as registeredproprietor with same details as to address etc.

3.

After how much time of the assignment or ofthe devolution of title, the request for recordal
is filed; the assignment deed is duly stamped& executed and whether necessary fee is paid.

4.

In case of assignment of trademark without
goodwill, or in case of assignment likely tocreate multiple exclusive rights in different
persons, or in case of assignment ofcertification
trademark,thenecessary
permission of the Registrar of trademarks isobtained and whether conditions of theRegistrar’s permission are followed.

5.

Whether there exists any dispute as to the title
or as to any interest in the trademark sought tobe assigned or transmitted. An affidavit of theassignee or of the assignor to this effect should
be called for.

In case of any objection, query letter will be
generated through the system and the same will besent to the applicant who has made the request, bypost.
In case an application for recordal of assignment ortransmission is allowed, the same shall be effectedin the system and communication to this effect besent to the applicant. All the requests allowed
during a particular period shall be compiled andsent through the system for publication in theensuing Trade Mark Journal.
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3

REGISTERED USERS:
3.1

Concept:

Permitted Use of a trademark Section 2(1)(r)"permitted use", in relation to a registered trade of the Trademark, means the use of trade mark Marks Act 1999(i) by a registered user of the trade mark in relation
to goods or services(a) with which he is connected in the course of
trade; and(b) in respect of which the trade mark remains
registered for the time being; and(c) for which he is registered as registered user; and(d) which complies with any conditions orlimitations to which the registration of registereduser is subject; or(ii) by a person other than the registered proprietor
and registered user in relation to goods or services (a) with which he is connected in the course of
trade; and(b) in respect of which the trade mark remains
registered for the time being; and(c) by consent of such registered proprietor in a
written agreement; and(d) which complies with any conditions orlimitations to which such user is subject and towhich the registration of the trade mark is subject;

3.2

Concept

Registered user:

3.3

Requirement Application for registration of registered user:
Section 49 (1) of
from
the An Application for registration of registered user the Trade Marks
applicantwill be filed by the registered proprietor and Act 1999; Rule

3.4

Section 48 (2) of
the Trade Marks
A person other than the registered proprietor of a Act 1999
trade mark may be registered as a registered user
thereof in respect of any or all of the goods orservices in respect of which the trade mark is
registered.

proposed user jointly on form TM-28.
An Application for registration of registered user inrespect of more than one trademark may be filed in
one request.
Requirement Documents required:fromthe The application to be accompanied by the following
applicantdocuments 1. Agreement in writing between the registeredproprietor and proposed user or duly
authenticated copy thereof with respect to thepermitted use of the trade mark. No application
will be entertained unless the same has been
filed within 6 months from the date of

80 of the Trade
Marks Rules
2002
Section 49 (1) of
the Trade Marks
Act 1999 andRule 80 of theTrade Marks
Rules 2002

Page | 136

agreement.
2. Document and correspondence, if any
mentioned in the agreement or authenticatedcopies thereof
3. An affidavit of the registered proprietor or bysome person authorized, testifying to thegenuineness of the documents accompanying
the application and containinga. the particulars and statements requiredby clause (b) of sub-section (1) ofsection 49;[including degree of control
to be exercised by the proprietor overthe permitted use; the fact as to whether
the proposed user shall be sole registereduser or their shall be any restriction;
terms & the duration of the permitteduse, goods/services in relation to which
registration of registered userisproposed, etc.]
b. the precise relationship between theregistered proprietor and proposed user,
if any,c. a statement as to the goods or services inwhich the registered proprietor isdealing, together with details as towhether the trade mark which is the
subject of the application has been usedby him in the course of trade before thedate of the application and if so theamount and duration of such user.
4. Such further or other documents andevidence/information, as the Registrar may call
for.
3.5

Requirement Variation or cancellation as registered user:
fromtheapplicant
The registration of a person as registered user-

Section 50 of
the Trade Marks
Act 1999a) may be varied by the Registrar of trademarks, asregards the goods or services in respect ofwhich it has effect, on the application in form
TM-29 of the registered proprietor of the trade
mark;b) may be cancelled by the Registrar on theapplication on form TM-30 by the registeredproprietor of the mark or by any other registeredusers;c) may be cancelled by the Registrar or on theapplication on form TM-31 any person on anyof the following, rounds, namely:i.
that the registered user has used thePage | 137trade mark otherwise than in accordancewith the agreement or in such way as tocause or to be likely to cause, deception
or confusion;ii.
that the proprietor or the registered user
misrepresented, or failed to disclose,
some fact material to the application forregistrationwhich
if
accurately
represented or disclosed would not havejustified the registration of the registereduser;iii. that the circumstances have changed
since the date of registration in such a
way that at the date of such application
for cancellation they would not havejustified registration of the registered
user;
iv.
that the registration ought not to havebeen effected having regard to rights
vested in the applicant by virtue of acontract in the performance of which heis interested;d) may be cancelled by the Registrar on his own
motion or on the application in writing in theprescribed manner by any person, on the groundthat any stipulation in the agreement between
the registered proprietor and the registered user
regarding the quality of the goods or services inrelation to which the trade mark is to be used iseither not being enforced or is not being
complied with;e) may be cancelled by the Registrar in respect ofany goods or services in relation to which thetrade mark is no longer registered.
3.6

Requirement Prescribed Fee TM-28/29/30/31:
from
the For application under section 49 to register aapplicantregistered user of a registered trade mark in respect

Item no. 32, 33,
34, 35 & 36 of
Ist Scheduleof goods or services within the specification
thereof: Rs. 5000/For application to register the same registered userof more than one registered trade mark of the sameregistered proprietor, where all the trademarks arecovered by the same registered user agreement inrespect of goods or services within the respective
specification thereof and subject to the same
conditions and restrictions in each case:For the first mark -Rs. 5000/-

For every additional mark of the proprietor includedin the application, and in the registered user
Page | 138

agreement - Rs 3000/For application under Section 50(1) (a) to vary theentry of a registered user of one trademark, where
the trademarks are covered by the same registereduser in respect of each of them
For the first mark – 5000/For every additional mark – 2500/For application under Section 50(1) (b) to cancel
the entry of a registered user of one trademark –2500/Where the application includes more than one
trademarkFor the first mark – 2500/For every additional mark – 500/For application under Section 50(1) (c) or (d) tocancel the entry of a registered user of one
trademark – 5000/Where the application includes more than one
trademarkFor the first mark – 5000/For every additional mark – 2000/3.7

OfficeActionAll requests for the registration of registered user,
requests for cancellation of registration of registereduser and documents submitted along with such
requests shall be scanned and uploaded in thesystem.
The data entry of a request for registration ofregistered user shall be made in ‘REGISTERD
USER’ module of TMAS. Thereafter a scrutiny oftherequestandscrutinyastoexistence/nonexistence of supporting documents
shall be made. Then the request shall be examined& disposed of in terms of relevant provisions of theTrade Marks Act, 1999 and Trade Marks Rules,
2002.
The Officer-in-Charge of A&R Section while
disposing the aforesaid requests shall take into
account the following facts:
1. Whether the trade mark in respect of which
the request has been filed, is renewed andvalid;
2.

Whether there exists any dispute as to the title
or as to any interest in the trademark sought tobe licensed.

3.

Whether the person entering into agreement
for registered user as a registered proprietor,
actually appears as registered proprietor in the
trademark registry records, with same details
as to address etc.
Page | 139

4.

Whether registered user agreement is duly
stamped & executed.

5.

Whether terms & conditions of registered user
agreement including the tenure & conditionsof permitted use, are in conformity with theregistration of trademarks concerned.

In case of any objection, a query letter will be
generated through the system and the same will besent to applicants who have made the request, bypost.
In case an application for registration of registereduser or the application for variation or cancellationof registration of registered user is allowed, thesame shall be effected in the system andcommunication to this effect be sent to theapplicant. All the requests allowed during aparticular period shall be compiled and sent throughthe system for publication in the ensuing Trade
Mark Journal.
4.
4.1

4.2

POST-REGISTRATION AMENDMENTS:
Concept

Amendments in the registration details:
The registered proprietor of a trade mark may apply
for correction of error or amendment as to thename, address, description of registered proprietor
or cancelling the entry of the trademark on theregister, or for striking out any goods or services
mentioned in the registered trade mark.
In case there are registered users of the trademarks
referred in the application, the copy of suchapplication shall be served by the applicant on theregistered user(s).
The application for correction of error or for
amendment may also be made by the registereduser, but in such case a notice as to such application
shall be given to the registered proprietor.
Requirement Amendment as to the name or the description offrom
the registered proprietor:
applicantA request for correction of error or for amendment
as to the name or the description of registeredproprietor shall be made on Form TM-33.
The supporting documents (like certificate from theRegistrar of Companies in case of change of nameof the company) shall have to be attached alongwith the request for change of name of registeredproprietor.
The registered proprietor may file a request forcorrection or amendment in the name or description

Section 58(1) of
the Trade Marks
Act, 1999; Rule
97 of the Trade
Marks
Rules
2002

Section 58(2) of
the Trade Marks
Act, 1999

Rules 91 & 97
of the Trade
Marks
Rules
2002

Page | 140

4.3

Requirement
fromtheapplicant4.4

Requirement
fromtheapplicant4.5

Requirement
fromtheapplicantRequirement
fromtheapplicant

4.6

4.7

Requirement
fromtheapplicant

4.8

Requirement
fromtheapplicantof the registered proprietor in respect of more than
one trade mark, in one request.
Amendment as to the address of the registeredproprietor:
The request for correction of error or for change in
the address of the registered proprietor shall bemade on Form TM-34 along with supporting
documents.
The registered proprietor may file a request forcorrection of error or for change in the address of
the registered proprietor in respect of more than one
trade mark in one request.
Amendment as to the address for service of theregistered proprietor:
An application for amendment in the address forservice of a registered proprietor shall be made on
Form TM-50 alongwith supporting documents. In
case the address for service of the registeredproprietor is sought to be amended on the basis ofPower of Attorney executed in favour of an Agent,a copy of the Power of Attorney shall also be
attached along with the request
A single application may be made for amendment
in the address of the registered proprietor in respectof more than one trade mark.
Cancellation of registered trade mark:An application for cancellation of registered trade
mark shall be made on Form TM-35.
Application to strike out any or some goods orservices:
An application to strike out any or some goods orservices for which a trade mark is registered shallbe made on Form TM-36.
Adaptation after amendment in Fourth Schedule:
On the classification set forth in the Fourth
Schedule being amended, the registered proprietor
of a trade mark may apply on Form TM-40 for theconversion of the specification relating to his trademark, so as to bring that specification into
conformity with the amended classification.
The application shall include a request for the likeconversion of the specification in respect of any
registered users under that registration, and theregistered proprietor shall serve a copy of theapplication on the registered user or users of the
trade mark, if any.
Alteration in registered trademark:An application for making alteration in theregistered trade mark may be made by registeredproprietor on Form TM-38 alongwith 5 legible
copies of the mark as it will appear after theRules 91, 96 &97 of the Trade
Marks
Rules
2002

Rules 91, 96 &97 of the Trade
Marks
Rules
2002

Rule 97 of the
Trade
Marks
Rules 2002
Rule 97 of the
Trade
Marks
Rules 2002

Rule 101 of the
Trade
Marks
Rules 2002

Section 59 of
the Trade Marks
Act, 1999; Rule
98 of the Trade
Marks
Rules
Page | 1414.9

proposed alteration, shall be attached with theapplication.
Requirem
Prescribed fee for various amendment
ent from
applications:the (Form TM-33) – Rs. 1000/applicant
Where the application includes more than one
trade markFor the first trade mark is - Rs. 1,000/For every additional mark - Rs. 500/(Form TM-34) – Rs. 500/Where the application includes more than one
trade mark and where the address in each case is
the same and is altered in the same way:
For the first entry - Rs. 500/For every other entry as per the application - Rs.
200/-



(Form TM-50) – Rs. 500/Where the application includes more than one
trade mark and where the address for service tobe entered/altered/substituted in each case is thesame and is altered in the same way:
For the first trade mark is - Rs. 500/For every additional mark - Rs. 200/-(Form TM-35) - Rs. 200/-(Form TM-36) - Rs. 200

(Form TM-40) - Rs. 1000/

2002
Items nos. 38,
39, 40, 41, 42,
43 & 45 of
Schedule-Iofthe Trade Marks
Rules 2002

In case more class(es) is/are added pursuant tosuch request, class fee @ Rs 3500/- per class isrequired to be paid.


4.10

OfficeAction(Form TM-38) – Rs. 2500/-

Where the application includes more than one
trade mark and the addition or alteration to bemade in each case being the same For the first mark - Rs. 2500/For every other Mark as per application - Rs.
1000/All requests for the correction/amendment of theregister renewal and other documents submitted
along with such requests shall be scanned anduploaded in the system. .
The
data
entry
of
the
requestforcorrection/amendment of the register shall be madein ‘PR Entry’ of POST REGISTRATION moduleof TMAS. Thereafter a scrutiny of the request andthat as to existence/nonexistence of supporting
Page | 142

documents shall be made. Then the request shall be
examined & disposed of as per relevant provisionsof the Trade Marks Act, 1999 and Trade Marks
Rules, 2002.
The Officer-in-Charge while disposing the
aforesaid requests for the correction or amendment
shall take into account the following facts :1. Whether the trade mark (marks) in respect ofwhich requests for correction or amendment in
the Register has been filed are renewed andvalid;
2. Whether the person on whose behalf the request
for correction or error is filed, is the person who
is, at present the registered proprietor orregistered user competent to file such request, orin case of Agent whether he is duly authorized
by the person who is at present on records ofRegister;
3. If there is any change in proprietorship of the
trade mark, the application for change in thename or details of registered proprietor cannot
be made on Form TM-33; in such case, a request
on Form TM-23 or TM-24 should be filed.
4. In case of request for alteration of goods orservices made on Form TM-36, no request shallbe allowed which would have the effect ofadding any goods or services in respect of which
the trade mark was registered;
5. In case of request for alteration in the trade markmade on Form TM-38, no request which would
have effect of adding any distinctive feature in
the trade mark or which would have effect of
substantially affecting the identity of the trade
mark shall be allowed.
In case of any objection, query letter may begenerated through the system and the same may besent to the applicant by post.
In case an application for amendment in Register
details is allowed, the same shall be effected in thesystem and all the requests allowed during aparticular period shall be compiled and sent throughthe system for publication in the ensuing Trade
Mark Journal.

Page | 143