Who Can Register A Trademark In India

Key Takeaways

• Trademark is to be filed in the office of the Trade Marks Registry within whose territorial limits, the principal place of business of the applicant or joint applicants is situated or in the Trade Marks Registry of the place mentioned in the address for service in India.
• Only a proprietor or owner or an agent on behalf of proprietor/owner is entitled to file a trademark application in respect of the desired specification of goods or services.
• A trademark agent is an individual or lawyer or firm registered with the Indian Trade Marks Registry. Such agents can file a trademark application on behalf of the applicant or proprietor of a firm.

Introduction

According to S.18 of the Trademark Act, 1999 (hereinafter referred to as ‘Act’), any person claiming to be the proprietor of a trade mark used or proposed to be used by him, and wants to get it registered, shall apply in writing to the Registrar for getting his trademark registered. The section further specifies that a single application may be made for registration of a trademark with respect to different classes of goods and services along with requisite fee payable for each such class of goods or services. It is to be filed in the office of the Trade Marks Registry within whose territorial limits, the principal place of business of the applicant or joint applicants is situated or in the Trade Marks Registry of the place mentioned in the address for service in India.Hence, only a proprietor or owner or an agent on behalf of proprietor/owner is entitled to file a trademark application in respect of the desired specification of goods or services.

Classes or specification of goods and services for Trademark Registration

• Name (Personal or surname or signature)
• Invented word/Arbitrary dictionary word
• Letters or Numerals or any combination
• Devices and Symbols
• Monograms
• Combination of Colours or with word or device
• Shape of good or their packaging
• 3-dimensional sign or mark
• Sound marks

Trademark Agent

A trademark agent is an individual or lawyer or firm registered with the Indian Trade Marks Registry. Such agents can file a trademark application on behalf of the applicant or proprietor of a firm. The application must indicate the trademark, the goods/services, name and address of the applicant and agent along with a power of attorney and the period of use of the mark. The application can be made in either English or Hindi.

Trademark Rules, 2002, also allow the advocates or qualified company secretaries to represent clients before the Indian Trademark Registry for trademark registration (Rule 150).

There are two ways to become a Trademark Attorney in India, first one is by being professionally qualified to practice before the Trade Mark Registry of India and the other is by passing the qualifying exam conducted to become a Trade Mark Agent. An exam is conducted by the Trademark Registry in order to admit persons to become Trademark Agents, so that they become eligible to practice before the Trademark Registry.

S. 145 of the Act read with Rule 21 of the Trademark Rules, 2002 states that an agent can be a legal practitioner, a person registered in the prescribed manner as a trade agent or person under the sole or regular employment of the principal. S.146 states that no agent of the registered proprietor or representative of the agent can register a trademark without the authority of the proprietor.

Filing

The application for Trademark Registration can be submitted either physically by submitting it at the front office counter of the concerned Trademark Registry or through post or through e-filing. E-filing can be done by using the website -https://ipindia.gov.in/

Forms that need to be filled

The necessary forms/documents that need to be procured for trademark registration are:

• Form TM-1: Application for registration of trademark for goods and services
• TM 48 Form prescribes for authorization of an agent (general power of attorney), one covering letter, and Board resolution (in case the application is made by a Company), List of Directors (in case the application is made by a Company) along with a Demand Draft of Rs.4000/- made in favour of “Registrar of Trademarks”.
• Identification proof of the signatory
• Address proof of the signatory
• Business proof (depends on the type of business)
• Udyog Aadhar/MSME registration certificate (optional)

Relevant Judgment

In the case of R.G. Oswal Hosiery Industries v. Union of India &Ors[W.P.(C) No.610/2010],the Delhi High Court held that Trademark Act, 1999, does not permit mere licenseeof a registered proprietor to apply for renewal. The word ‘agent’ has to be understood in the light of S.145 of the Trademark Act, 1999. S.145 defines an agent to either be a legal practitioner or trademarks agent or a person in the employment of the principal. It further held that a licensee of a registered proprietor cannot apply for renewal of registration,as a licensee is not an agent.

Conclusion

The registration of a trademark can be done by registered proprietor or an agent on his behalf as provided under S.18 of the Trademark Act, 1999. The Act does not permit a third party or mere licensee to register a trademark without being an agent of the Proprietor/Owner. The filing of the application can be done physically or by way of e-filing. Two important forms that need to be filled are Form TM-1, for registration of goods and services and the other is TM-48 that prescribes for authorization of agent.