This article has been written by Ms. Soumya Sharma, a Third Year Law Student of UPES, Dehradun.

Introduction

In the bustling commercial landscape of India, trademarks serve as valuable assets, safeguarding a company’s brand identity and protecting its reputation. Trademark prosecution, the legal process of registering and defending trademarks, plays a crucial role in ensuring that businesses can effectively harness the power of their unique brand identifiers. This essay delves into the intricacies of trademark prosecution in India, providing a comprehensive guide for businesses seeking to protect their intellectual property.

Understanding Trademark Prosecution

A number of judicial processes are included in trademark prosecution, which aims to protect trademarks from infringement allegations and obtain trademark registration. It takes a diversified approach that includes both pre- and post-registration activities.

Pre-Registration Trademark Prosecution

Before embarking on the formal registration process, businesses must conduct a thorough trademark search to ensure that the proposed mark is not already registered or confusingly similar to an existing mark. This proactive approach helps avoid potential objections during the registration process and reduces the risk of future infringement disputes.

Filing the Trademark Application

The next step is to file a trademark application with the Trade Marks Registry if the trademark search verifies the proposed mark’s distinctiveness. The application needs to follow certain guidelines, such as giving comprehensive details regarding the mark, the applicant’s information, and the products or services the mark is intended for.

Examination of the Trademark Application

The Trade Marks Registry thoroughly examines the mark after receiving the trademark application to determine whether it satisfies the requirements for registrability under the Trade Marks Act, 1999. Making sure the mark is unique, truthful, and unlikely to be confused with already-registered marks is part of this.

Addressing Objections and Responding to Examination Reports

In the event that the trademark application is objected to by the examiner, the applicant is given the chance to answer the issues brought forth. This could entail supplying more proof, changing the mark, or limiting the range of products or services the application covers.

Publication of the Trademark Application

Once the examiner is satisfied with the application, the mark is advertised in the Trademark Journal, allowing any third party who believes their rights might be affected to file an opposition within four months.

Opposition Proceedings

The applicant and the opponent participate in a quasi-judicial hearing before the Registrar if an opposition is submitted. Each side makes an argument and provides evidence to back up their claims. The trademark registration is then either approved or denied by the Registrar’s decision.

Initiating Opposition Proceedings

An opposition can be filed within four months of the advertisement of a trademark application in the Trademark Journal. The opponent must file a notice of opposition with the Registrar, along with a statement of grounds for opposition. The grounds for opposition may include:

• Similarity of marks: The proposed mark is identical or confusingly similar to an existing registered trademark or a trademark application pending registration.
• Prior use of the mark: The opponent has a prior right to use the mark, such as through common law rights or unregistered use.
• Distinctiveness of the mark: The proposed mark lacks the requisite distinctiveness and is not registrable under the Trade Marks Act.
• Deceptiveness of the mark: The proposed mark is deceptive or likely to cause confusion among consumers.

Course of Opposition Proceedings

Once the notice of opposition is filed, the applicant is served with a copy of the opposition statement. The applicant has four months to file a counterstatement, addressing the opponent’s allegations and providing supporting evidence.

Subsequently, the Registrar may issue a show cause notice to either party, seeking further clarification or additional evidence. The parties may also exchange affidavits and exhibits to support their respective claims.

Decision and Hearing

Oral arguments from both parties may be heard at a hearing held by the Registrar. The hearing gives the parties a chance to address any unresolved matters and directly address the Registrar with their arguments.

The Registrar renders a decision about the opposition after taking into account the submissions made by both parties. The opposition may be upheld, so granting the opponent’s claim and blocking the proposed mark’s registration. Alternatively, the trademark application may move forward with registration if the Registrar rejects the opposition.

Appeals

Any party may file an appeal with the Intellectual Property Appellate Body’s Appellate Board if they are unhappy with the Registrar’s ruling (IPAB). After reviewing the Registrar’s ruling, the IPAB has the authority to affirm, reverse, or amend it.

Effects of Legal Opposition

The procedure of registering a trademark can be greatly impacted by opposition actions. They may cause registration delays, raise expenses, and exacerbate outcome uncertainty. They do, nevertheless, also offer a crucial measure of protection for outside parties who might be entitled to use a proposed trademark.

Post-Registration Trademark Prosecution

Prosecution actions could be required to preserve and uphold a trademark even after it has been registered. These pursuits could involve:

Monitoring for infringement: Companies need to keep a close eye out for instances of trademark infringement in the marketplace and take appropriate measures to stop third parties from using their registered trademarks without authorization.

Enforcement actions: Businesses may seek injunctions, damages, and the seizure of infringing items as legal remedies if infringement is found.

Updating and renewing registrations: In order to keep their legal standing, registered trademarks need to be updated every ten years. Companies need to be aware of when their protection expires and take prompt measures to guarantee it.

CASE LAWS: 

• R.G. Anand & Co. v. M/s Delux Food Products Ltd., [2013] 100 Bom LR 1029: This case involved the use of the mark “Delux” by Delux Food Products Ltd., which was found to be similar to the registered trademark “Delux” owned by R.G. Anand & Co. The Bombay High Court held that the use of the mark “Delux” by Delux Food Products Ltd. was likely to cause confusion and granted an injunction restraining the company from using the mark.
• Tata Sons Ltd. v. M/s Reed Benson & Co., Ltd., [1988] 59 Comp Cas 723: This case involved the use of the mark “Tata” by Reed Benson & Co., Ltd., which was found to be similar to the registered trademark “Tata” owned by Tata Sons Ltd. The High Court of Delhi held that the use of the mark “Tata” by Reed Benson & Co., Ltd. was likely to cause confusion and granted an injunction restraining the company from using the mark.

Conclusion

Trademark prosecution is a complex and ever-evolving field, requiring a deep understanding of trademark law and experience in navigating the intricacies of the registration process. Engaging with skilled trademark attorneys is essential for businesses seeking to effectively protect their valuable brand assets. By proactively safeguarding their trademarks, businesses can foster consumer trust, enhance brand reputation, and secure a competitive edge in the dynamic Indian market.

References

1. Trade Marks Act, 1999: https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf 
2. The Trade Marks Rules, 2002: https://indiankanoon.org/doc/197444606/ 
3. Guidelines for Examination of Trademarks (2019): https://ipindia.gov.in/guidelines-tm.htm 
4. Hamdard (Waqf) Lab. v. Cibal Geigy Ltd., [1999] 2 SCC 183: https://indiankanoon.org/search/?formInput=trademark+doctypes:judgments 
5. R.G. Anand & Co. v. M/s Delux Food Products Ltd., [2013] 100 Bom LR 1029: https://www.livelaw.in/news-updates/delhi-high-court-kfc-exclusive-right-trademark-registry-registration-chicken-zinger-mark-221656 
6. Tata Sons Ltd. v. M/s Reed Benson & Co., Ltd., [1988] 59 Comp Cas 723: https://www.legalserviceindia.com/legal/article-7204-trademark-infringement-a-case-analysis-of-tata-sons-v-s-hakunamatata-tata-founders.html