When a Firm or a proprietor files for a Trademark Logo Registration with the IPR Authority in India, the filed application goes through multiple stages. The primary two steps are the procedure of application filing by the Registrar and the Assessment of the filed application by the Examiner. The latter is carried out to ensure that the filed Trademark does not bear a resemblance with any of the pre-existing registered trademark logos. In case the Examiner finds any similarity, then the Examiner can raise an objection with the Trademark Proprietor.
The Examiner can refuse to accept an application on two grounds: Absolute and Relative. In this, the former refusal is quite obvious to the Examiner as well as the Trademark Applicant. But, the latter one, the Relative Grounds for Refusal, can get very obscure and ambiguous for the applicant. Therefore, we decided to write this article to detail every aspect of the relative grounds of refusal on which the Examiner can reject or object to your application.
𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐋𝐨𝐠𝐨 𝐈𝐝𝐞𝐧𝐭𝐢𝐭𝐲
As per the defined sections of the Trademark Registration Act, said section 12, The RoT, i.e., the Registrar of Trademarks, cannot register a filed trade mark in any of the following cases:
1.The identity of the Trademark is similar to an existing Trademark
2.Filed Trademark’s goods and services are covered by another Trademark
3.Trademark causes confusion among the general Public, including the likely association with a registered
trademark.
𝐂𝐨𝐦𝐦𝐨𝐝𝐢𝐭𝐢𝐞𝐬 𝐨𝐟 𝐚 𝐃𝐢𝐟𝐟𝐞𝐫𝐞𝐧𝐭 𝐏𝐫𝐨𝐩𝐫𝐢𝐞𝐭𝐨𝐫
If the filed Trademark is to be registered for goods or services not similar to the earlier trademark proprietor is registered in the name of a different proprietor. In such cases, the Registrar will not register such Logos. For a well-known trade mark in India and using the later Trademark without the due cause. In such a situation, the applicant proprietor can take unfair advantage, which will be detrimental to the distinctive character and the registered Trademark’s market reputation.
𝐏𝐫𝐞𝐯𝐞𝐧𝐭𝐢𝐨𝐧 𝐨𝐟 𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐔𝐬𝐚𝐠𝐞
The Registrar will not register a trademark if its use in India is liable to be prevented by any of the following reasons:
1. Law of passing off protection against the unregistered Trademark in the course of trade
2. As per the Law of copyright
𝐒𝐩𝐞𝐜𝐢𝐚𝐥 𝐂𝐚𝐬𝐞𝐬 𝐨𝐟 𝐑𝐞𝐠𝐢𝐬𝐭𝐫𝐚𝐭𝐢𝐨𝐧
Nothing can prevent the Registration of a trademark if the Proprietor of the registered Trademark consents to the new Registration. In such cases, the Registrar can approve the Registration under special circumstances specified in section 12 of the Trademark Registration procedure.
𝑹𝒆𝒈𝒊𝒔𝒕𝒆𝒓𝒆𝒅 𝑻𝒓𝒂𝒅𝒆𝒎𝒂𝒓𝒌
Here, the earlier Trademark is a registered trademark.
𝑬𝒂𝒓𝒍𝒊𝒆𝒓 𝒇𝒊𝒍𝒆𝒅 𝑻𝒓𝒂𝒅𝒆𝒎𝒂𝒓𝒌
It can also be an application filed under section 18 with an earlier filing date.
𝑰𝒏𝒕𝒆𝒓𝒏𝒂𝒕𝒊𝒐𝒏𝒂𝒍 𝑹𝒆𝒈𝒊𝒔𝒕𝒓𝒂𝒕𝒊𝒐𝒏
Further, the earlier Trademark can also be an international registration referred to in section 36E of the Trademarks Act.
𝑪𝒐𝒏𝒗𝒆𝒏𝒕𝒊𝒐𝒏𝒂𝒍 𝑨𝒑𝒑𝒍𝒊𝒄𝒂𝒕𝒊𝒐𝒏
It can also be a convention application referred to in section 154, but the application must have its date earlier than the filed Trademark. It must consider appropriate priorities claimed in respect of the trademark logos.
𝐖𝐞𝐥𝐥-𝐤𝐧𝐨𝐰𝐧 𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐋𝐨𝐠𝐨
Any Trademark on the date of a registration application of the filed Trademark of the priority, claimed in respect to the filed application, is entitled to protection is known as a well-known Trademark.
The Registrar cannot refuse a Trademark of Registration on the specified grounds in sub-sections (2) and (3). However, if the Proprietor of the earlier trade mark can object to any one or more of those grounds in opposition proceedings.
𝐕𝐞𝐫𝐢𝐟𝐢𝐜𝐚𝐭𝐢𝐨𝐧 𝐨𝐟 𝐖𝐞𝐥𝐥-𝐤𝐧𝐨𝐰𝐧 𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐋𝐨𝐠𝐨
The Registrar, while determining whether a trademark is well-known or not, can take into account any fact that he considers relevant for determining a well-known trade mark, such as the following:
1.Recognition of the trademark in Public: This includes knowledge in India obtained for trademark promotion
2.Duration, extent and geographical area of use of the specified Trademark
3.Duration, extent and geographical area of the Trademark promotion: This includes the following:
-Advertising of goods/services to which the trademark applies
-Publicity of goods/services to which the trademark applies
-Presentation of goods/services to which the trademark applies
-Fairs of goods/services to which the trademark applies
-Exhibition of goods/services to which the trademark applies
4.Duration and geographical area of any Registration of trade mark under the Trademark Act so that they reflect its use.
5.Record of successful enforcement of the trademark rights: It can be, in particular, the extent to which the trade mark has been recognised as well-known by a Court or the Registrar.
𝐓𝐫𝐚𝐝𝐞𝐦𝐚𝐫𝐤 𝐋𝐨𝐠𝐨 𝐫𝐞𝐜𝐨𝐠𝐧𝐢𝐭𝐢𝐨𝐧 𝐢𝐧 𝐏𝐮𝐛𝐥𝐢𝐜
The Registrar, while determining a trade mark as recognised in Public, must take into account the following conditions:
1.Number of potential consumers of the specified goods/services
2.Number of persons involved in the distribution channels of these goods/services
3.Business Circles dealing with such goods/services to which that filed trademark applies
Suppose a trade mark is well known in one of the relevant sections of the General Public by the Registrar. In such cases, he can describe the trade mark as a well-known trade mark for Registration under the Trademark Act.
To learn about the Online Trademark logo registration process or the Company Logo registration fees, connect with the IPR experts at Registrationwala.
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