The Trademarks Act, 1999 is the statute governing trademark registration in Delhi. The development of trademark law can be traced from the onset of industrial revolution. There was massive production and distribution of goods and services. Normally, the impact was that the market became more and more competitive. The manufacturers began to use a sign or a symbol to distinguish among similar goods. In addition, they too began to advertise the products. The result was that the trademark so attached began to acquire a goodwill and reputation among the customers. There was a temptation among the traders and manufacturers to copy the well known marks so that he can reap the profits by using others goodwill. Therefore, there arose a necessity to protect the goodwill and reputation everywhere. The first multilateral Convention on trademark at the international level is Paris Convention for the Protection of Industrial Property adopted in 1883.      

Before going through Trademark registration in Delhi, let’s first understand in detail what is trademark?

 

What is trademark ?

A trademark is nothing more than a visual symbol or sign in the form of a word, letter, number, label, drawing, picture, emblem, colour or any other form of presentation. A trademark ordinarily performs the following functions:-

1. It is used for the identification of goods and services of one trader from another.
2. It signifies that all the goods and services bearing a particular trademark are of same quality.
3. It signifies that all the goods and services bearing a particular trademark come from a single source.     
4. It acts as a primary instrument in advertising and selling the goods.

A trademark law serves two important purposes:-

1. It protects the consumers from deception and confusion by identifying the goods and services of one source from rest of the world.
2. It protects the business of the owner of the trademark and the goodwill attached to it.
3. It provides for the registration of trademark.

The Supreme Court in Laxmiant V. Patel vs. Chentanbhai Shah has explained the objective of trademark. No trader is permitted to carry on a trade in the name belonging to someone else. There are twofold of this prohibition. Firstly, honesty and fair play are the fundamental principles of the business sector. Secondly, by adopting a name familiar to consumers the trader intends to divert the customers and clients of a trader thereby causing injury to him.

In Delhi prior to the independence the statutory protection to trademarks was accorded by the Trade Marks Act, 1940. The parent Act the Trade Marks Act, 1938 of England. However in order to meet to the recent trade developments and give effect to the recommendation of Justice A.N. Rajgopala Aiyangar, the Trade and Merchandise Marks Act was passed in 1958. Due to globalization there had been substantial changes in the trading and commercial sector. To keep pace with the changing trend of investment flow and technology transfer at the international level, a comprehensive law was required which took the form of the Trade Marks Act, 1999. It came into force on and from 15th September, 2003 and the 1958 Act was repealed.            

Section 2(1)(zb) of the Act defines a ‘trademark’. It lists out three essentials of a trademark:-

1. It should be a mark.
2. It should be capable of represented graphically meaning thereby the trademark can be represented in paper form.  
3. It should be capable of differentiating products of one seller from that of another.

‘Mark’ has been defined under Section 2(1)(m) of the Act. The subsection gives an inclusive definition of mark. The list counts a device, brand, heading, label, tickets, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours.   

What are different components of trademark registration in Delhi ?

 

• Service mark

Service marks are the marks that are used on the services which an individual intends to provide. For example, LIC, ICICI etc.

• Certification mark

It implies a mark capable of distinguishing the goods or services in connection with which it is used not only in the course of trade but also has been certified by the proprietor of the mark in respect of origin, quality, material, mode or method of manufacture of goods or performance of services, accuracy or other such features of goods and services not certified and registrable under Chapter IX of the Trade Marks, 1999. It now includes services also {section 2(1)(e)}.    

• Collective mark

It has been defined under section 2(1)(g). A trademark which is used simply to represent the goods or services of members of an association excluding a partnership within the meaning of Partnership Act, 1932 from those of others. Comparatively in case of collective mark, the proprietor is an association of persons than in other cases where the proprietor is a single person.      

• Well known mark

Section 2(1)(zg) defines well known mark. It simply means that the mark on goods or services has become so substantially popular among the public that there establishes some sort of connection between the product and the person using the mark or services.

• Series mark

It refers to number of trademarks which materially resemble each other and differs on the point of non-distinctive character thereby not substantially affecting the identity of the trademark. Most probably it is the UK system which provides for the registration of series mark.    

Trademark Registration in Delhi

Under section 5 of the Act, the Trade Mark Registry established under the 1958 Act shall be Trade Mark Registry under the Act. The head office of the Trademark Registry is at Mumbai. Kolkata, Delhi, Chennai and Ahmedabad have branch offices of the Registry. The Registry has its own seal. The Central Government determines the jurisdiction of each of the offices for its operation. The Register of Trademarks shall be kept at the Mumbai Head Office. The entries made in the Register are:-

• Name, address and description of the proprietors,
• Notifications of assignment and transmission,
• Name, address and description of registered users,
• Conditions, limitations and other specifications as may be prescribed.

Section 9 of the Act lays down the absolute grounds for registration of trade marks. These are as follows:-

1. Trademarks devoid of distinctive character.  For example:-

• Food services of a restaurant
• Strong and durable furniture for furniture
• High tech for technology related goods/services  

1. Trademarks consisting exclusively of such marks or indications used in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin etc.
2. Trademarks consisting exclusively of such marks or indications that have already become a customary in the current language or in the bona fide and established practices of trade.   

 Nevertheless the registration of a trademark cannot be refused on the ground that before the date of application for registration it has acquired a distinctive character due to its use or it is a well known trade mark. E.g. Reliance.  

A trademark cannot be registered if:-

1. It is likely to deceive the public or create confusion among them.
2. It is likely to hurt the religious sentiments of a class or section of the citizen of Delhi.
3. It contains scandalous or obscene matter.
4. Its use has been prohibited by the provisions under the Emblems and Names (Prevention of Improper Use) Act, 1950.

A trademark cannot be registered if it consists exclusively of:-

1. The shape of goods which result from the nature of goods itself.
2. The shape which substantially adds to the value of goods.
3. The shape of goods necessary to obtain a technical result.

Nevertheless the nature of goods and services with respect to which the trademark is used or proposed to be used is not a ground for refusal of trademark registration in Delhi.

However, trademark registration in Delhi is not absolute. It is subject to the limitations and restrictions to which the trademark is subject. Section 28(3) of the Act states that where two or more persons have registered as a proprietor with respect to an identical or similar trademark, none of them shall have an exclusive right to use the trademark.    

A trademark is considered to have a separate existence in the sovereign state in which it is registered. Therefore, trademarks are territorial in nature. This is called territoriality doctrine as opposed to the universality doctrine. The latter doctrine has been discarded by all the countries all over the world. So the registered proprietor is entitled to protection conferred by the law and exclusivity vested within the territorial limits as conferred by a municipal law. Prior use of the trademark in a dominion will not entitle the owner ipso facto the exclusive trademark rights in another dominion.  

Different types of trademark registrations in Delhi

Traditional or conventional trademarks in Delhi are as follows:-

1. Device – It comprises of pictorial representation.
2. Brand- It refers to the brand printed on goods such as Monkey Brand fabric.
3. Heading – although the dictionary meaning of heading refers to inscription but the meaning of trademark with reference to trademark is not very crystal clear.
4. Label- it is a composite mark comprising of various features including devices and words ordinarily printed on paper pasted or attached to the goods themselves or their containers.
5. Ticket- it is stitched or tagged on the goods and contains a mark printed or pasted.
6. Name – it can be name of an individual, firm or company. It includes abbreviation of name and domain name.
7. Word, letter and numeral- the meaning of word, letter and numeral with respect to trademark is same as that of its general meaning. Example- APPLE, GOOGLE, INFOSYS, TATA, IBM etc.
8. Shape of goods-
9. Combination of colours- it refers to a scheme of colouring. The protection of colour trademark is the toughest of all.

Apart from the traditional trademarks mentioned above, there is a new category of marks protectable only in few countries. The modern marks include three-dimensional marks such as the shape of goods or their packaging, colours, per se, sound marks, motion marks, position marks, hologram marks, slogans, smell marks, feel marks and taste marks. Graphical representation of some of some of these marks is a serious problem.

Smell Marks

The manufactures are adding scent to their products. However, the smell must not result from the nature of the goods itself. For example, Dutch company’s tennis balls with the scent of newly mown grass, registration of tires with a floral fragrance and darts with strong smell of bitter beer in UK.

Sound Marks

Depictions by oscillogram, spectrum, spectrogram and sonogram has emerged as some of the methods for visual representation of sound marks. Example –

• Yahoo for human voice yodeling Yahoo
• National Stock Exchange for theme song
• ICICI Bank for corporate jingle
• Britannia Industries for fore note bell sound
• Cisco for the tune heard on logging in to the conferencing services Web Ex
• Nokia- guitar notes on switching on the device
• Edgar Rice Burroughs for Tarzan Yell    

Taste Marks

The WIPO Standing Committee on the Law of Trade Marks, Industrial Designs and Geographical Indications states that a written description of the taste and an indication that it consists a taste mark satisfies the statutory requirement of graphical representation of trade mark. For example, in re N.V. Oraganon, the USPTO has rejected the registration of orange flavor for the pharmaceuticals on June 14, 2006. Similarly, in R 120/2001-2, the Office for Harmonization in the Internal Market refused to register the taste of artificial strawberries.   

Moving Images, Holograms and Gestures

Multimedia production has paved the path for entry of more modern marks such as holograms, gestures and motion or moving image marks. The registration of these non-traditional trademarks require use of a sequence of pictures or drawings depicting how the trademarks functions. The most common form of multimedia marks is probably motion marks.   

Three-dimensional Trade Marks

The product, shape and packaging qualify for registration under the category of three-dimensional trademarks. The Trade Marks Act, 1999 provided for the first time the registration of shape of goods and their packaging.   

Process of Trademark Registration in Delhi

According to Section 8 of the Act, any person who is the proprietor of the trademark used or proposed to be used having his place of business in Delhi can make a Trademark application Delhi to the Registrar in the manner so prescribed for registration of the trade mark. A single application may qualify for registration of classes of goods and services. But the fee payable shall be in respect of all such class of goods and services. The trademark application Delhi shall be filed in the office of Trade Marks Registry within Delhi jurisdiction as the principle place of business of the application or the first applicant in case of joint applicants, as the case may be, is in Delhi.

Subject to the provisions of the Act, the Registrar may either refuse the application or accept it completely or accept it with modifications, amendments, additions and deletions as he thinks fit. Where the Registrar refuses or conditionally grants the application, he shall have to specify the reasons in writing the grounds for such refusal or conditional acceptance and the materials used by him for arriving at the conclusion.

However the Registrar for the trademark registration in Delhi may after the acceptance of the application and before the grant of registration is of the view that

1. The application had been accepted in error.
2. The subject matter of the application should not be registered or registered with conditions, additions and limitations

He may withdraw his acceptance provided that he has given reasonable opportunity of hearing to the applicant if he so desires and proceed as if no acceptance was granted. On acceptance of the trademark application Delhi, either completely or partially, the Registrar shall advertise the application and opens it for challenge in accordance with section 20. A person in writing can give a notice to the Registrar of opposition to registration within four months from the date of advertisement or re-advertisement of the application in registration. The registrar shall send a copy of the opposition to the applicant.        

In response to the opposition filed with the Registrar, the applicant according to section 21 has to file a counter-statement within the period of two months. In case, the applicant fails to submit the counter-statement it shall be deemed that he has abandoned the application and if he submits the counter-statement a copy of the same shall be served upon the opponent. Any such evidence on which the applicant and opponent are relying needs to be also submitted with the Registrar within the prescribed time period. Thereafter, the Registrar shall hear both the parties and take the final decision whether the registration is to be granted absolutely or conditionally.

A trademark is registered under section 23. The date of trademark registration in Delhi shall be date of application. The duration of trademark registration in Delhi under section 25 is 10 years.      

Major Reasons for Online Trademark Registration in Delhi  

Some of the reasons for online trademark registration in Delhi are as follows:-

1. Exclusive right – The owner of trademark enjoys exclusive right over it. He can use the trademark for all the products falling under a class. He is the sole owner of the trademark. It gives him a right to bring a legal action against the unauthorized user of the trademark.          
2. Builds trust and goodwill – Since everyone in the market is aware of the product and services therefore, it establishes trust and goodwill among them. It also helps in creating loyal customers who will always opt for it.    
3. Differentiate product – It is a mark used to differentiate products of one trader from that of another.
4. Recognition to product quality – Customers attach the quality of the product with its brand name. The quality of a particular brand helps in attracting customers and keeping the loyalty of old customers intact.       
5. Creation of asset – It leads to creation of intangible asset. Registered trademark is a right created which can be sold, assigned, franchised and commercially advertised.     
6. Protection against infringement – If any person without the approval of the owner uses the trademark or makes a deceptive use of the trademark, he is entitled to legal protection under the Act and prevent the wrongdoer from continuing the same.       
7. Protection for 10 years at low cost – Online trademark registration provides for low maintainability cost. Upon registration of trademark, the applicant has to pay just the maintenance cost and renewal cost. It is cost efficient and creates a positive image of the company.      
8. Global trademark registration – Where a person wishes to register the trademark in countries other than India, the trademark registered can be used as the base application.  
9. Attract human resources – Young minds aspire to join the big brands as it acts as a magnet. They are attracted towards them. It reduces the cost of hiring and other related activities.   
10. Federal protection – It serves as a constructive notice to the rest of the country that the applicant is the proprietor the mark.    

Benefits of Trademark Registration in Delhi

The benefits of trademark registration are as follows:-

1. Exclusive right – The owner of trademark enjoys exclusive right over it. He can use the trademark for all the products falling under a class. He is the sole owner of the trademark. It gives him a right to bring a legal action against the unauthorized user of the trademark.  (section 28(1) of the Act)
2. Builds trust and goodwill – Since everyone in the market is aware of the product and services therefore, it establishes trust and goodwill among them. It also helps in creating loyal customers who will always opt for it.    
3. Differentiate product – It is a mark used to differentiate products of one trader from that of another.
4. Recognition to product quality – Customers attach the quality of the product with its brand name. The quality of a particular brand helps in attracting customers and keeping the loyalty of old customers intact.       
5. Creation of asset – It leads to creation of intangible asset. Registered trademark is a right created which can be sold, assigned, franchised and commercially advertised.     
6. Protection against infringement – If any person without the approval of the owner uses the trademark or makes a deceptive use of the trademark, he is entitled to legal protection under the Act and prevent the wrongdoer from continuing the same.       
7. Protection for 10 years at low cost – Online trademark registration provides for low maintainability cost. Upon registration of trademark, the applicant has to pay just the maintenance cost and renewal cost. It is cost efficient and creates a positive image of the company.      
8. Global trademark registration – Where a person wishes to register the trademark in countries other than Delhi, the trademark registered can be used as the base application.  
9. Attract human resources – Young minds aspire to join the big brands as it acts as a magnet. They are attracted towards them. It reduces the cost of hiring and other related activities.   
10. Federal protection – It serves as a constructive notice to the rest of the country that the applicant is the proprietor the mark.    

Documents required for Trademark registration in Delhi

The documents which are inevitable for trademark registration in Delhi are as follows:-

1. Name, address and nationality of the application. Where the applicant is a non-natural person, the country or state of incorporation with complete address. Name of all the partners in case of a partnership firm.
2. A list of all goods and services which are proposed to be registered under the Trademark Act.
3. Trademark entity where the entity is an individual, start-up or small enterprise
4. Soft copy of the trademark to be registered.
5. Where the registration application claims a priority date from an application filed previously in another country, details of that application too needs to be provided (application number, filing date, country and goods and services).
6.   Date of first use of the trademark in Delhi if at all it has been used in Delhi.
7. A power of Attorney signed by the authorized signatory of the applicant.

For an individual or Hindu Undivided Family

• ID proof
• Business registration document

In case of Company/ Limited Liability Partnership

• Shops Establishment License
• Certificate of incorporation
• Address proof of the company

In case of Partnership Firm

• A partnership deed

Some of the trademark applications are as follows:-  

• TM-A:- For goods and services belonging to one class.
• TM-A: For numerical or letter textile trade mark excluding certification trade mark, collective mark
• TM-A: For goods and services included in a convention country of a particular class
• TM-A: For different classes of goods and services from convention country
• TM-A: For different classes of goods and services
• TM-R: Registration of a collective mark for goods and services for a specified class
• TM-R: Registration of a certification trade mark for specified goods and services

Various Advantages of getting a Certificate on Trademark Registration in Delhi    

1. Exclusive right-The owner of trademark enjoys exclusive right over it. He can use the trademark for all the products falling under a class. He is the sole owner of the trademark. It gives him a right to bring a legal action against the unauthorized user of the trademark.          
2. Builds trust and goodwill-Since everyone in the market is aware of the product and services therefore, it establishes trust and goodwill among them. It also helps in creating loyal customers who will always opt for it.    
3. Differentiate product- It is a mark used to differentiate products of one trader from that of another.
4. Recognition to product quality-Customers attach the quality of the product with its brand name. The quality of a particular brand helps in attracting customers and keeping the loyalty of old customers intact.       
5. Creation of asset-It leads to creation of intangible asset. Registered trademark is a right created which can be sold, assigned, franchised and commercially advertised.     
6. Protection against infringement- If any person without the approval of the owner uses the trademark or makes a deceptive use of the trademark, he is entitled to legal protection under the Act and prevent the wrong-doer from continuing the same.       
7. Protection for 10 years at low cost-Online trademark registration provides for low maintainability cost. Upon registration of trademark, the applicant has to pay just the maintenance cost and renewal cost. It is cost efficient and creates a positive image of the company.      
8. Global trademark registration- Where a person wishes to register the trademark in countries other than Delhi, the trademark registered can be used as the base application.  
9. Attract human resources- Young minds aspire to join the big brands as it acts as a magnet. They are attracted towards them. It reduces the cost of hiring and other related activities.    
10. Federal protection-It serves as a constructive notice to the rest of the country that the applicant is the proprietor the mark.    

FAQs about Trademark Registration in Delhi

Is registration under trademark registration in Delhi compulsory ?

No. It’s not compulsory. Rather it is done voluntarily to protect one’s interests in the market. Trademark registration in Delhi confers the right of exclusive use on the owner and protection from any infringement. Section 27 of the Act disentitles any person from instituting any proceeding so as to prevent the infringement of an unregistered trademark. The section recognizes the common law remedy of passing off. Under passing off, the owner of goods and services can take legal action against the infringer. So, even if someone has not done trademark registration in Delhi or any where in India, even then he has legal protection from any conversion or infringement by way of Passing off available under civil laws of the country.

Is amendment of registered trademark under trademark registration in Delhi possible at a later date ?

A registered trademark can be amended at a later date in accordance with section 22 of the Act provided that the nature of trademark cannot be substantially changed if a request has been filed in the format so prescribed along with 16 copies of the amended mark.

Can trademark registration in Delhi be removed on ground of non-use ?

According to section 47(3) of the Act, a trademark can be removed on the ground of non-use provided that

• The trademark was registered devoid of bona fide intention and has not been used till a date three months before the date of application for removal.
• The trademark has not been used continuously for a period of five years from the date of registration of trademark and application made after three months period from the expiry of five year.

What classification of goods are applied in Delhi ?

The International Classification of goods and services is adopted in Delhi. The Registrar shall classify the goods and services for the purpose of trademark registration in Delhi. In case any question arises as to the class within which the goods and services fall, the decision of the registrar shall be final {section 7}.      

Can a multi class trademark application be filed in Delhi ?

Yes. A multi class trademark application can be filed in Delhi.

How to find out whether a trademark or brand name is registered in Delhi/India or not ? 

In order to find out whether a trademark is registered in Delhi/India or not, the applicant has to search the India Trademark Registry database which will show that the trademarks registered are identical or deceptively similar to the trademark whose registration has been proposed.

How much time it takes for trademark registration in Delhi ?

Trademark registration in Delhi takes approximately 18-24 months to obtain registration without any objections and oppositions. But the trademark application number is generally issued within one or two days from the filing of the trademark application Delhi.

What is the difference between trademark registration in Delhi and copyright registration for logo ?

A logo can be protected both under the Copyright Act as well as the Trademark Act. Registration under the latter Act enables the applicant to protect the brand name and also the manner the trademark is used erstwhile copyright protection is only for the logo and not for the brand name.

Is transfer of trademark permissible ?

Yes. The trademark can be transferred from one person to another. The processing fee depends on the status of the mark to be transferred. Both registered and unregistered trademarks can be transferred.

What are the penalties for infringement of trademark ?

The minimum punishment for selling or providing services using identical or deceptively similar trademark is six months and maximum three years of imprisonment. In addition, the wrong-doer has to pay a fine of not less than fifty thousand repees which may extend to two lakh rupees.

What are the fundamental trademark laws and treaties in Delhi ?

At the national level, the Trademarks Act,1999 and the rules made there under is the exclusive legislation. Few Conventions and treaties are as follows:-

• Madrid Protocol
• National Bilateral Treaty
• Regional Treaty
• Decisions of the courts
• Office practices and rulings
• Decisions of Intellectual Property Appellate Board

Can a foreign company file a single trademark application for more than one goods or services at the time of Trademark Registration in Delhi?

The answer is in affirmative. Delhi follows the system of multi-class applications together with the International Classification. There are total 42 classes in which the goods and services have been divided. The applicant can file multi-class applications for both goods and services.    

Can a foreign company sell its products or services in Delhi even before formal trademark registration in Delh ?

Yes. Indian trademark law permits the filing of trademark application on ‘intent-to-use’ basis. However, the proprietor has to commence the use of the trademark within 5 years and 3 months of the date of Trademark registration in Delhi.

How can a foreign company file a trademark registration in Delhi ?

The procedure of registration is as follows:-

• Conduct a search in the India Trademark Registry
• Conduct a search in the common law arena to ascertain whether third parties are using the trademark and if it so, ascertain the extent of such use.
• Seek local counsel’s opinion whether the trademark is available for registration or not.
• Take immediate steps for registration of trademark in Delhi/India.
• Monitor the trademark journals so to ascertain whether any deceptive trademark has concerning of their interest been published
• Take immediate steps for registration of domain name.

What is duration of trademark ?

Under section 25 the duration of trademark registration in Delhi or India is 10 years.  The registration can be renewed from time to time. The trademark shall not be removed from the register if an application for renewal of trademark is made in the prescribed format within six months from the expiration of the last registration from trademark.

What is the effect of removal of trademark from register ?

As per section 26, even if a trademark has been removed from the register on non-payment of renewal fee, it shall deemed to be already on the register for the purpose of an application for the registration of another trademark during one year immediately after the date of removal unless the Tribunal (the Registrar or Appellate Board, as the case may be) is satisfied that either

• There has been no bona fide use of the trade mark which has been removed during the two years preceding its removal
• There would be no deception or confusion from the use of the trademark which is the subject matter of the registration application by reason of any previous use which has been removed.

Is it possible for a domain name to become eligible for trademark registration in Delhi?

An internet domain name can be registered as a trademark provided it is used to identify and distinguish goods and services. Example: having a URL is not sufficient for trademark registration in Delhi.

Who has more rights when two people are using the same mark and none of them is registered ?

Where two or more people are using the same trademark and neither of them is registered in that case each of the user will have common rights limited to their geographical boundary. If both the territorial limits and the field of use overlap with each other, the party which can establishes the earlier date of use of the trademark will ordinarily have prior rights.       

The Trademarks Act, 1999 is the domestic law regulating the registration of trademark in Delhi. The Act is in consonance with the TRIPS Agreement.   

A lot of law firms and other service providers provide services related to Trademark Registration in Delhi. For further information regarding Registered Trademark, Unregistered Trademark, Trademark Registration in Delhi and Brand registration in Delhi, visit the official website of Trademark Registration in Delhi.