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Tag: Intellectual property India

  • TRADEMARK EXAMINATION REPLY

    INTRODUCTION

    A trademark is a key asset for any business, protecting its unique identity in the market. However, the journey to trademark registration can face obstacles, especially when the Registrar of Trademarks issues an Examination Report with objections. These objections may concern the distinctiveness of the mark, similarity to existing trademarks, or compliance with legal requirements.

    Applicants must submit a response to the examination report within 30 days in order to move forward with registration. This reply is critical to address the examiner’s concerns and ensure the mark moves forward in the registration process.

    In this article, we’ll walk you through the common objections raised in the examination report, the process of filing a reply, and how TMWALA can assist you in navigating this crucial stage of trademark registration.

    WHAT IS AN EXAMINATION REPORT?

    An Examination Report is a formal response issued by the Trademark Examination Officer after reviewing the trademark application. The report includes the officer’s findings and any objections to the application. These objections may be raised under various sections of the Trademarks Act, 1999, such as:

    • Section 9: Absolute grounds for refusal of registration
    • Section 11: Relative grounds for refusal of registration

    The report details the specific reasons why the application may be rejected or why certain aspects of the trademark need clarification or modification.

    HOW TO FILE A REPLY TO THE TRADEMARK EXAMINATION REPORT

    A trademark serves as a vital identifier for a company’s products or services, distinguishing them from competitors in the market. Trademarks are fundamental to protecting a brand’s identity and intellectual property, whether it’s a logo, sign, design, or even words. To guarantee that a company’s intellectual property is legally protected, trademarks are registered in India under the Trademarks Act of 1999. However, the process doesn’t always end once an application is filed. In some cases, the Registrar of Trademarks may issue an Examination Report, which could raise objections regarding the mark’s eligibility for registration. Applicants must respond to these objections by filing a Reply to the Examination Report to proceed with the trademark registration.

    OBJECTIONS RAISED IN THE EXAMINATION REPORT

    Objection under Section 9

    Absolute grounds for refusal are outlined in Section 9 of the Trademarks Act of 1999. Common objections made under this clause include the following:

    1. Lack of Distinctiveness: The mark must be capable of distinguishing the goods or services of one entity from another. If the mark is too generic or descriptive, it may be rejected.
    2. Common or Generic Words: Marks that make use of names or words that are widely used may be disapproved.
    3. Customary in Trade: Marks that are commonly used in the industry or everyday language are not registrable.

    Objection under Section 11

    Section 11 addresses relative grounds for refusal, which typically include:

    1. Similarity to an Existing Mark: If the applied mark is identical or similar to an existing registered trademark, it may be rejected to avoid confusion in the marketplace.
    2. Deceptive or Misleading Marks: If the mark is likely to deceive the public or mislead consumers, it may not be allowed.
    3. Violation of Public Morality: Marks that are offensive or detrimental to public interest may be rejected.

    DOCUMENTS REQUIRED

    When filing a Reply to the Examination Report, the following documents are typically required:

    1. Brand Logo: A clear representation of the trademark being applied for.
    2. Trademark Examination Report: The original report issued by the Registrar.
    3. Relevant Case Laws or Precedents: Legal precedents that support the distinctiveness of the trademark.
    4. Supporting Documents: Evidence to establish that the mark is distinctive or has acquired distinctiveness.
    5. Affidavit: A signed statement from the applicant confirming the details provided.

    Navigating through the requirements for filing a reply can be daunting. TMWALA can provide expert guidance in preparing all the necessary documents, including case law precedents and supporting evidence, to strengthen your case and ensure your trademark meets the legal criteria.

    TIME PERIOD TO FILE A REPLY

    Within 30 days of the Examination Report’s issue, the applicant must reply. Failing to file the reply within this time frame will result in the abandonment of the application.

    TMWALA ensures that you stay on top of deadlines. Their team will help you draft the reply promptly and ensure that all relevant documents are submitted within the prescribed time frame, avoiding any unnecessary delays or risk of abandonment.

    REASONS TO FILE A REPLY TO THE EXAMINATION REPORT

    1. Protection of the Mark: In order to save the trademark from being refused or abandoned, a reply must be filed. It provides the applicant with an opportunity to defend the mark’s distinctiveness and address any objections raised.
    2. Legal Rights and Infringement Protection: A registered trademark prevents others from using the same or similar marks, giving its owner exclusive rights. Filing a timely reply is essential to secure these rights.
    3. Presenting Precedents and Case Laws: A well-drafted reply allows the applicant to present case law, legal precedents, and factual evidence to establish the mark’s unique nature and to counter objections raised by the examiner.
    4. Failure to Reply: If no reply is filed, the trademark application is considered abandoned. Therefore, it is essential to act promptly to safeguard your mark.
    5. Creating a Distinctive Identity: A successful trademark registration establishes a unique identity in the marketplace, which is essential for building goodwill and consumer loyalty.

    STEPS TO FILE A REPLY TO THE EXAMINATION REPORT

    Filing a reply to the Examination Report involves the following steps:

    1. Carefully Analyse the Objections Raised

    Before drafting the reply, it’s crucial to understand the specific objections raised in the examination report. The applicant must carefully review the grounds of objection (whether under Section 9 or Section 11) and analyse the examiner’s concerns.

    2. Draft the Reply

    The applicant must draft a comprehensive reply that addresses each objection raised. This reply should clearly explain why the objections are unfounded and provide evidence to support the mark’s distinctiveness.

    3. Finalize and Submit the Reply

    Once the reply is drafted, it must be reviewed for accuracy and completeness. The applicant should ensure that all supporting documents and evidence are included before submitting the reply within the stipulated 30-day period.

    TMWALA provides professional assistance in drafting a legally sound reply to the examination report. Their team ensures that all objections are addressed effectively, presenting compelling arguments backed by relevant legal precedents and evidence.

    TIME EXTENSION FOR FILING A REPLY

    If the applicant fails to file a reply within 30 days, the application will be deemed abandoned. However, under Form TM-M of the Trademarks Act, the applicant can request an extension by submitting valid reasons for the delay and paying the prescribed fee. Extensions are typically granted for a maximum of 30 additional days, provided the applicant can justify the delay.

    CONCLUSION

    Trademark registration is a vital step in protecting a brand and its intellectual property rights. However, if an Examination Report raises objections to the application, the applicant must take prompt action to file a Reply within the specified time frame. A well-drafted reply addresses the examiner’s concerns, presents the necessary evidence, and ensures that the trademark proceeds toward registration.

    TMWALA can be a valuable partner throughout this process. Their team of experts helps navigate complex legal objections, ensuring that your trademark registration process is efficient, timely, and legally sound. From drafting responses to analyzing the objections raised, TMWALA ensures that your brand gets the protection it deserves.

    By following the outlined process and engaging expert help from TMWALA, you can ensure that your trademark has the best chance of successful registration, helping you protect your intellectual property and secure your brand’s future.

  • FORMALITIES CHECK PASS

    INTRODUCTION

    The “Formalities Check Pass” status in a trademark application indicates that the Indian Trademark Registry has verified the applicant’s details, the application’s accuracy, and that it complies with all procedural requirements. This signifies that the application is complete and ready to proceed to the next stage, which is the examination of the trademark’s distinctiveness and potential conflicts with existing trademarks. 

    The process of registering a trademark in India involves several stages, each with its legal significance. One of the early and crucial milestones in this journey is the “Formality Check Pass”. Despite sounding procedural, this step plays an essential role in ensuring your trademark application moves ahead smoothly.

    In this article, we’ll break down what “Formality Check Pass” means, why it matters, and what comes after.

    TRADEMARK STATUS: FORMALITIES CHECK

    At this stage in the trademark registration process, the Registrar of Trademarks undertakes a preliminary review to verify that all procedural requirements have been met under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. This initial screening is essential to confirm that the application is formally complete and compliant.

    The formalities check involves a thorough verification of the applicant’s basic details, including their name, address, and nationality. Additionally, it ensures that the information provided in the application is accurate, consistent, and complete. As part of this process, the Registrar also assesses whether the applied trademark is prima facie free from conflict with any pre-existing trademarks and does not violate any statutory provisions.

    When an application successfully clears this stage, an Examination Report is issued, indicating that the formalities check has been passed. The application then moves forward to the substantive examination phase, during which the distinctiveness and registrability of the trademark are evaluated in greater depth

    However, if any discrepancies, omissions, or legal inconsistencies are found during the formality scrutiny, the Registrar may raise formal objections. In such cases, the applicant is required to respond to and resolve the objections within a prescribed time period. Only after these issues are satisfactorily addressed will the application be allowed to proceed to the next stage of examination.

    TMWALA provides end-to-end support during this critical phase by ensuring that your application is complete, legally sound, and that all mandatory documentation is in order. In the event of any formal objections, their experts assist in timely and accurate responses to avoid delays or rejections.

    TIMELINE FOR FORMALITY CHECK PASS IN TRADEMARK REGISTRATION

    1. Submission of Trademark Application

    The process officially begins when the applicant submits the trademark application through the prescribed Form TM-A, typically via the online portal. This date of filing is considered Day 0 in the trademark registration timeline.

    2. Commencement of Formality Check

    Within approximately one to seven working days after submission, the Trade Marks Registry initiates a preliminary review of the application. This involves verifying whether the correct form has been used, whether the goods or services have been classified properly, and whether the applicant’s details, accompanying documents, and statutory fees are all in order.

    3. Result of the Formality Check

    If the application meets the necessary procedural requirements, the status is updated to “Formality Check Pass”, generally within seven to ten working days from the date of filing. At this point, the application progresses to the substantive examination stage. On the other hand, if any procedural deficiencies or errors are detected, the application status changes to “Formality Check Fail”. In such cases, the Registrar notifies the applicant about the issues identified, and the applicant is usually given a 30-day window to make the required corrections and resubmit the application for further processing.

    TMWALA provides expert guidance in addressing objections quickly and effectively, minimizing the risk of rejection or abandonment due to unresolved issues.

    WHAT HAPPENS AFTER PASSING THE FORMALITY CHECK?

    When a trademark application’s status reflects “Formalities Check Pass,” it indicates that all required details and accompanying documents have been submitted under the procedural norms and have successfully cleared the preliminary review. However, it is important to understand that this status does not equate to the trademark being officially registered.

    Following this stage, the application is forwarded to an Examining Officer, who is responsible for assessing whether the mark complies with all substantive legal requirements necessary for registration. The duration of this examination phase can differ significantly, influenced by the complexity of the application, the existence of similar marks already on record, and the current volume of pending applications at the Trademark Registry.

    During the examination period, it is crucial for applicants to keep a close watch on the status of their application and respond accordingly to any communications or additional queries raised by the examiner. Additionally, conducting a prior trademark search is advisable to identify any potential conflicts that might pose a barrier to successful registration.

    WHAT IF THE APPLICATION FAILS THE FORMALITY CHECK?

    In cases where discrepancies or omissions are detectedsuch as missing documents, incorrect class selection, or unclear representations, status is marked as “Formality Check Fail.” The Registrar may issue a notice outlining the objections or irregularities, and the applicant is typically given a limited time to rectify the issues. If no corrective action is taken, the application may be treated as abandoned. Therefore, attention to detail during the filing stage is essential to avoid unnecessary delays and complications.

    With TMWALA’s proactive legal and procedural support, applicants can quickly address any issues flagged during the formality check, preventing delays and reducing the risk of the application being considered abandoned.

    WHY THIS STAGE MATTERS

    Though seemingly procedural, the formality check acts as a vital filter in the registration process. It prevents defective or incomplete applications from entering the examination pipeline, thereby conserving administrative resources and safeguarding applicants from future rejections. A successful formality check demonstrates that the applicant has taken care to comply with the prescribed legal norms, which significantly increases the chances of a smooth progression through the remaining stages of registration. It is also worth noting that this step does not assess the distinctiveness or legality of the trademark itself; it merely confirms that the application is ready for such evaluation.

    LEGAL BASIS

    While the term “Formality Check Pass” is not explicitly defined in the Trade Marks Act, 1999, it is an administrative step under the authority of Section 18 of the Act, read with Rule 10 to Rule 22 of the Trade Marks Rules, 2017.

    Section 18(1) – Any person claiming to be the proprietor of a trademark used or proposed to be used may apply in the prescribed manner for the registration of the mark.

    The Registrar must ensure that the application is in order before it proceeds to substantive examination under Section 18(2).

    CONCLUSION

    The “Formality Check Pass” stage, although administrative in nature, plays an essential role in the trademark registration process under Indian law. It acts as the gateway to substantive examination and ultimately to registration. For applicants, understanding this stage means being better prepared to submit complete, compliant, and well-documented applications. In the competitive world of branding and business, where legal protection of identity is crucial, even procedural compliance can make a world of difference. As such, navigating this stage successfully is not just about ticking boxes about setting the foundation for securing a valuable intellectual property asset.

    TMWALA empowers businesses and individuals by simplifying the trademark filing process, offering legal clarity, handling objections, and providing expert end-to-end support, helping you protect your brand efficiently and confidently.

  • TRADEMARK VIENNA CODIFICATION

    INTRODUCTION

    When you file your application, it goes through a process known as Vienna Codification. It is a crucial part of Trademark Registration process as it ensures that your trademark does not create any conflict with any other existing mark. The interesting thing about Vienna Codification it only applies on the trademark that include any kind of figure such as any symbol, element, shape, logo, design etc.., it means that if someone applies for a word mark that does not consist of any kind of device mark with it that trademark will not go for Vienna Codification.

    The Vienna Agreement, which creates an international classification of the figurative aspects of marks and is governed by the World Intellectual Property Organization (WIPO), created the Vienna Codification on June 12, 1973, during the Vienna Diplomatic Conference. It includes 918 auxiliary parts that could be included in a trademark, 29 kinds of features that are further subdivided into 145 divisions, and 816 major sections.

    SEND TO VIENNA CODIFICATION?

    After filing your trademark, you can check your trademark status, and if it shows to “send to Vienna Codification” it means:

    • Your mark consists of any kind of figure
    • Now the registry checks its symbol/logo/design in 29 different categories and try to find out whether it is similar to any existing mark or not
    • Then if approved the trademark get a Vienna Code, code assigned as the rules of Vienna Convention.

    WHAT SHOULD APPLICANT DO?

    No action is required to be done by the applicant when the mark is sent for Vienna Codification, all he can do is just check the status of the application as it will get changed and goes to another step of registration process. it’s essential to stay informed and be ready to modify your trademark if necessary.

    NEED FOR VIENNA CODIFICATION

    It might be challenging to distinguish between different logos that have several components if there is no structure in place to do so. Vienna The various figurative components that make up a logo can be categorized with the use of codification. It is a hierarchical framework that includes every conceivable figurative aspect, from general to specialized.

    The components are separated into 29 categories, each of which has several subcategories.Read here Vienna Classification

    ILLUSTRATIONS

    Let’s understand Vienna Codification in Device Mark & Word Mark cases through illustrations

    1.ChaiPatra” – Device Mark

    Background:

    Priya, an entrepreneur founder from Dharamshala, Himachal Pradesh, opened a boutique tea café chain called ChaiPatra (Hindi for “tea leaf”). Inspired by the Himalayan lifestyle and sustainable tourism, she built her brand around authenticity, nature, and eco-awareness. The logo of the café contains a traditional kulhad (clay cup) with steam that creatively evolves into a green leaf representing purity and freshness.

    Trademark Application & Vienna Codification:

    To protect both the brand name as well as the distinctive logo, Priya registered a trademark application with the Indian Trademarks Registry. Since there are elements of figurative in the logo, the application was Vienna Codified a general classification procedure followed around the world for trademarks which include visual or design elements.

    Codification Details:

    • The kulhad was categorized under Vienna Code 11.3, which pertains “containers for beverages, plates and dishes, kitchen utensils for serving, preparing or cooking food or drink”
    • The leaf-shaped steam element was assigned Vienna Code 5.3, representing “leaves, needles, branches with leaves or needles”

    These codes allow the Registry to efficiently search for pre-existing trademarks with similar visual elements, particularly within the same or related industries, such as food, beverages, or wellness.

    Outcome:

    After the Vienna Codification, there were no conflicting or misleadingly similar trademarks. The application went through the examination and publication phase without any objections.

    Conclusion:

    While Vienna Codification did not ask Priya for direct action, her awareness of the process enabled her to monitor her application more efficiently and predict review timelines. This codification step was an added layer of defense, enabling her to ensure the distinctiveness of her brand’s visual identity.

    2. “TechVed” – Word Mark

    Background:

    TechVed, a Mumbai-based software development and UX consulting company, was established by Ramesh and his university friends. The company, which focuses on e-governance and health-tech solutions, took a clean and contemporary branding strategy. Their trademark was the word “TechVed” in a sans-serif, bold font with no logos or ornamental details.

    Trademark Application & Vienna Codification:

    Since the application was for a pure wordmark without any visual elements, it circumvented Vienna Codification completely. The Indian Trademarks Registry held that the mark contained no figurative matter, and the application went straight to the examination stage.

    Examination Process:

    At this point, the mark was tested for textual uniqueness, phonic similarities, and conflicts with existing wordmarks. The Registry deemed “TechVed” sufficiently unique within its class and approved it for publication and registration.

    Conclusion:

    Firms such as TechVed, which register purely text trademarks, are advantaged by a streamlined and sometimes quicker registration process. Yet, even in the case where there are no design elements, it is still important that the wordmark itself is unique and not deceptively close to marks that already exist.

    CONCLUSION

    Vienna Codification is a decisive factor in safeguarding the integrity of the system of trademark registration, particularly of marks with figurative elements such as logos, symbols, and designs. By having a systematic and internationally accepted means of classifying visual elements, it guarantees that trademarks are unique and do not conflict with one another.

    The Vienna codification process holds even more importance in cases where a copyright is being filed for an artistic work which is being used in relation to goods and services. The Vienna codification process thus, helps the Trade Marks Registry to analyse the visual and figurative elements of existing trademarks in its records and compare it with the proposed copyright and generate an examination report prior to the issuance of search certificate under section 45 of the Copyright Act, 1957.

    Although there are no immediate actions that applicants must take during this period, keeping up to date with the process can assist in anticipating issues and having a solid, legally sound brand identity. Familiarity with and respect for the Vienna Codification system is not a mere technical nicetyit’s a prudent step toward future brand protection.

  • SECTION 34 OF THE TRADE MARKS ACT, 1999

    Section 34 of the Trade Marks Act, 1999 is arguably one of the most fundamental sections of the trademark law in India. The primary objective of the trademark law is to protect the rights of the genuine prior users and original adopters of the trademark and section 34 is one of the tools to ensure exactly that. This article will delve deep into the intricacies of Section 34 of the Trade Marks Act, 1999, related doctrines and case laws.

    Basis of Section 34 of the Trade Marks Act, 1999

    Section 34 of the Trade Marks Act, 1999 derives its existence from the common law doctrine of ‘Prior Use’. The Prior Use Doctrine aims at safeguarding the rights of prior users of a trademark. Similarly section 34 of the Trade Marks Act, 1999 also aims at protecting the rights of the prior user and adopter of a trademark by prohibiting the registered proprietor of a trademark to interfere with or restrain the use of the identical or similar trademark by its prior user.

    For Example: A lawfully adopts and starts to use the mark ‘Banana’ in relation to Footwear in 1999 and continues to use such a mark in trade without acquiring any trademark registration for the same. Later, in the year 2005, B adopts the mark ‘Banannaa’ in relation to the same set of goods and thereafter also acquires trademark registration for the same. However, after acquiring the trademark registration, B tries to restrain the use of the mark ‘Banana’ by A on account of its trademark registration. In such case, B’s act of trying to restrain the use of the mark ‘Banana’ by A is barred by the provisions of section 34 of the Trade Marks Act, 1999.

    Here, although A did not acquire the registration of its trademark, this does not take away his right as the adopter, originator and prior user of the trademark. This is exactly where the provisions of section 34 of the Trade Marks Act, 1999 comes into play. In the aforementioned illustration, A has the common law rights as the prior user continue to use its mark without interruption for any subsequent user or adopter.

    Understanding Section 34 of theTrade Marks Act, 1999

    Section 34 gives better rights to prior user as compared to a registered proprietor by taking away the registered proprietor’s right to interfere with or try to restrain the use of an identical trademark by a prior user. This basically means that registered proprietor’s rights cannot grant it superiority over a prior user.

    This provision recognises the common law rights of a prior user accumulated overtime due to use the continuous use of its mark in the market and grants it superiority over the statutory rights acquired by someone due to registration.

    • Registration gives Statutory Rights
    • Use gives common law rights

    Generally, when a person who is the original adopter, continuous user and bona fide originator of the mark, gets its trademark registered, such person is awarded with both statutory as well as common law rights arising from its mark. However, section 34 of the Trade Marks Act, 1999 specifically talks about the situation when such statutory and common law right are held by separate person on account of their registration and prior use respectively.

    Essentials of Section 34 of theTrade Marks Act, 1999

    The following are the essential conditions for the applicability of this Section 34 of the Trade Marks Act, 1999:

    • The third party must be using a mark which is identical to the registered mark;
    • Such mark must be use in relation to similar set of goods and services as the registered mark;
    • Such use of the identical mark must be of a prior date of use than the registered mark;
    • Such use by the third party must be continuous and uninterrupted;

    The term “USE” under section 34 of the Trade Marks Act, 1999 means continuous and consistent use for a substantial time period. prior to the date of filing or date of use of the registered mark. Such “USE” shall not be broken or intermittento. Use must be uninterrupted and such that would sufficiently generate recognition of the mark of the prior user in the market and trade circle.

    Prior Use Vs. Registration

    It is very common in trademark cases for there to be a fight between prior use and registration. This dispute was finally and conclusively settled by the Hon’ble Supreme Court in the case of S. Syed Mohideen vs P. Sulochana Bai, https://indiankanoon.org/doc/149416858/, has categorically and vehemently held that prior use is superior than registration. Hon’ble Court also held that the even the registered proprietor cannot interfere with the rights of prior user.

    A similar finding was made by the Hon’ble court in the case of N.R. Dongre And Ors vs Whirlpool Corporation, wherein the Hon’ble Supreme court recognised the trans-border reputation of Whirlpool’s mark and, owing to its prior use, substantial transborder recognition and goodwill, granted Whirlpool protection against trademark squatting and passing off.

    To secure protection under section 34, the prior user must establish bona fide adoption and good faith usage with substantial corroborating evidence.

    Conclusion

    The prior use doctrine, section 34 of the trademark law as well as passing off rights under granted under section 27, all aim to protect the rights of prior user from undue exploitation from later registrants. Indian courts have also time and again clarified its stance on this issue and consistently upheld the rights of prior users, thereby, granting assurance to actual originators and bona fide adopters that their rights remain secured irrespective of trademark registration.

  • Section 18 of the Trademarks Act 1999: Application for Registration

    The Trademark law in India provides a structured process for the registration of trademarks. This is done in order ensure brand protection and legal enforcement against any type of infringement. Under the trademark law the central provisions which govern the trademark registration in India is the Section 18 of the Trademarks Act. 

    This section specifically lays down the procedure and eligibility criteria for filing of a trademark application. It correspondingly clarifies in detail who can apply for a trademark and who cannot along with the necessary formalities, and all the essential aspects to form a valid application.

    General Terms Associated with Section 18:

    Applicant: An Applicant can be a person or an entity like sole proprietors, businesses (Registered Companies), partnerships (like LLPs), trusts, or even government bodies applying for trademark registration.

    Proprietor: Proprietor is the individual or legal person who claims the ownership of a trademark and seeks exclusive rights to it.

    Proposed to be Used: A trademark application can be filed even before the actual use of the said mark. It is done so provided that the applicant has a bona fide intention to use it in the coming future.

    Service Mark: It is a trademark which is used to identify services in order to distinguish them from the goods. For example, a logo of a famous hotel chain is a service mark.

    Goods Mark: It’s a trademark which is used to identify and distinguish products i.e. goods. For example, the “Nike” logo is specifically registered and known for footwear and apparel wear.

    Subsections of Section 18 of The Trademarks Act, 1999

    Section 18 governs the application procedure for registration of a trademarkas per the Trademarks Act 1999. It mainly consists of four vital subsections that outline specifics. These specifics include l who can apply, the requirements of a bona fide intention to use the said trademark, and the procedure involved in registration.

    Section 18(1): Who Can Apply for a Trademark 

    According tothe Section 18(1) of Trademarks Act, any legal person who is claiming to be the proprietor of a trademark can apply to register it for themselves.

    They can be individuals, businesses, and legal entities. Even foreign entities can also apply for registration of a trade mark in India, however, only if they comply with Indian trademark laws. Joint applicants can also file a trademark application for registration of a trade mark together.

    Illustration: A Start-up Founder Applying for a Trademark

    Let’s imagine an entrepreneur, Raj, launching a new brand of organic skincare products under the name “GlowPure.” Even before selling any product, he can file a trademark application under Section 18, claiming proprietorship and expressing an intent to use the mark.

    Section 18(2): The Requirement of Bona Fide Intention

    According to Section 18(2), an application for registration of the trade mark must be filed with a genuine intention to use the trademark in a commercial field. This means an applicant cannot register a trademark just to ‘block’ others from using it. They must be intending to use it for themselves.

    Case Law: Pfizer Products Inc. v. Rajesh Chopra & Ors. (2006 (32) PTC 301 (Del)

    In context of this case, Pfizer, the American pharma giant, opposed a trademark application on the grounds that the applicant had “no bona fide intention” to use the mark. Delhi High Court held that if an applicant cannot demonstrate a genuine intention to use the trademark, their application may be rejected by the Registrar. To learn more about this case visit Indian case law.

    Illustration: Preventing Trademark Hoarding

    Suppose a company registers the name “ZyloTech” for mobile phones but never launches a product under this name. And now if another business wants to use “ZyloTech” for electronics and can prove the first applicant had no real intention to use the mark, they may challenge the registration.

    Fun Fact: If the owner has not applied the trademark to the goods or services for a continuous period of five years or more, the Registrar has the authority to withdraw the trademark from the Register. Five years from the day the trademark is entered into the Register, the Registrar will compute. 

    As a result, a person or business will forfeit their trademark rights if they do not use their registered trademark for five years after the date of registration.

    Trademark Registration and Past Use Without Usage

    As per theSection 18(2), a trademark applicant must have a “bona fide intention” to use the said mark. Nevertheless, what happens if someone has been associated with a trademark but hasn’t actually used it in commerce and now wants to register it?

    This situation commonly arises when businesses have reserved a brand name, have built recognition through promotions, or have used it sporadically without actual trade. Indian courts have recognized that past association with a mark, even without substantial use, can support registration—provided there is a genuine intent to use it in the near future.

    Case Law: Hardie Trading Ltd. v. Addison Paints & Chemicals Ltd. (2003 (27) PTC 241 (SC))

    In this case, the Supreme Court held that mere non-use of a mark does not automatically disqualify a proprietor from registration, but lack of intent or unjustified delays in use may lead to cancellation.

    Can You Use a Trademark Immediately After Filing?

    If an application is filed today, can the owner start using the trademark right away? Absolutely Yes, a trademark applicant can start using the mark immediately, even before registration is granted. That is because trademark rights in India are based on use, not just registration.

    However, under Section 46, if a trademark is registered but remains unused for five consecutive years, it may be removed from the register due ‘to non-use cancellation’. This means businesses should commence usage as soon as possible to maintain exclusive rights.

    Thus, while a pending application provides some legal standing, full proprietary rights and legal enforcement only arise once the mark is successfully registered.

    Section 18(3): Filing a Trademark Application 

    As per Section 18(3) of the Trade Marks Act, a trademark application must be filed in the prescribed manner, accompanied by:

    • A clear representation of the mark.
    • Details of goods or services the mark will be used for.
    • The applicant’s name and address.
    • A statement declaring whether the mark is already in use or is “proposed to be used.”
    • Payment of the prescribed fee.

    Case Law: Amar Nath Sehgal v. Union of India (2005 (30) PTC 253 (Del))

    This case in particular emphasized the importance of properly filing and maintaining trademark applications in order to ensureit’s legal validity and protection.

    Illustration: Trademark Filing for an E-Commerce Brand

    Take a company named “ShopEase” files a trademark application for its online shopping platform. It provides details about its logo, service category (e-commerce), and business owner details to complete the application correctly.

    Section 18(4): Single or Multiple Class Applications

    Section 18(4) of the Trade Marks Act allows an applicant to file for trademark registration under:

    • A single class, if the trademark applies to one category of goods/services.
    • Multiple classes, if the trademark is intended for different types of goods/services.

    Case Law: Dabur India Ltd. v. Emami Ltd. (2004 (29) PTC 1 (Del)

    In this case, Dabur applied for a trademark in multiple categories, but Emami challenged it, claiming overlapping product lines. The Court clarified the need for clear classification in multi-class applications.

    Illustration: A Fashion Brand Expanding to Accessories

    A fashion brand “TrendWear” initially registers its trademark under Class 25 (clothing). Later, as it starts selling handbags and shoes, it files additional applications under Class 18 (leather goods) and Class 35 (retail services).

    Key Takeaways from Section 18

    • Anyone who claims to be a trademark proprietor can apply for registration of a trademark.
    • A bona fide intention to use the trade mark for which the application for registration has been filed is mandatory.
    • The application for registration must follow prescribed procedures.
    • A trademark can be registered under one or multiple classes.

    Conclusion

    Thus, Section 18 of the Trademarks Act, 1999, ensures a structured and fair trademark application process. By requiring a ‘bona fide intention’ and clear application formalities.It prevents fraudulent filings and ensures genuine proprietors receive their due legal protection. So businesses and individuals seeking trademark registration should accordingly ensure their compliance with the prescribed guidelines as to strengthen their intellectual property rights.

    Author- Apoorva Lamba, 2nd Year LLB. Student of Madhav Mahavidyalaya, Jiwaji University, Gwalior