Trademark Law FIrm India

Applications for registration of trade marks are to be filed in the prescribed manner, either in paper form or in an electronic form.   Pursuant to sub-section (3) of section  6 which enables the maintenance of Register of Trade Marks wholly or partly on computer, the Register of Trade Marks is now being maintained only on computer in an electronic format.  The detailed procedure for filing of trade mark applications is explained herein below:

Section 18(1) enacts that – “any person claiming to be the proprietor of a trade mark used or
proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.”

The provisions contained in rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002 prescribe the procedure in this behalf. These are as follows:

Rule 25. Form and signing of application:- (1) An application to the Registrar for the registration of a trade mark shall be  signed by the applicant or his agent. (2) An application to register a trade
mark under sub-section (2) of section 154 for a specification of goods or services included in any one class shall be made in Form TM-1. (3) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2.  (4) A single application for the registration of a trade mark for different classes of goods or services from convention country under sub-section (2) of section 154 shall be made in Form TM-52.

(5) An application to register a textile trade mark (other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 shall be made in Form TM-22.  (6) An application to register of a textile trade mark other than a collective mark or a certification trade mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods included in one item of the Fifth Schedule under rule 145 from a convention country under sub-section (2) of section 154 shall be made in form TM-45. (7) (a) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class shall be made in Form TM-3.

(b) An application under section 63(1) to register a collective trade mark for a specification of goods or services in any one class from a convention country under subsection (2) of section 154 shall be made in Form Tm-64. (8) (a) An application under section 71 to register a certification trade mark for a
specification of goods or services included in any one class shall be made in form TM-4. (b) An application under section 71 to register a certification trade mark for a specification of goods or services in any one class from a convention country under subsection (2) of section 154 shall be made in Form TM-65. (9) A single application for the registration of a trade mark for different classes of
goods or services shall be made in Form TM-51. (10) An application to register a series trade marks under section 15 for a specification of goods or services included in a class or for different classes shall be made in form TM-8.

(11) An application to register a series trade mark under section 15 for a specification of goods or services included in a class or different classes from a convention country under sub-section (2) of section 154 shall be made in Form TM-37. (12) An application for the registration of a trade mark for goods or services shall -(a) explain with sufficient precision, a description by words, of the trade
mark if necessary, to determine the right of the application; (b) be able to depict the graphical representation of the trade mark;  ( c) be considered as a three dimensional trade mark only if the application contains a statement to that effect; (d)be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect; (13) An amendment to divide an application under proviso to section 22 shall be made in Form TM-53. (14) An application, not being a series trade mark shall be in respect of one trade mark only for as many class or classes of goods or services as may be made. (15) In the case of an application for registration in respect
of all the goods or services included in a class or of a large variety of goods or services in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered. (16) The specification of goods or services shall not ordinarily exceed five hundred characters for each class. An excess space fee as prescribed in the First Schedule is payable with each application in Form TM-61. (17) Asingle application for the registration of a collective mark - (a) in different classes shall be made in Form TM-66; (b) in different classes from a convention country shall be made in Form TM-67. (18) A single application for the registration of certification trade mark – (a) in different classes shall be made in form TM-68; (b) in different classes from a convention country shall be
made in Form TM-69. (19) Where an applicant files a single application for more classes than one and the Registrar determines that the goods or services applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods or services to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of the original filing date or in the case of an application from a convention country the convention application date under
sub-section (1) of section 154 provided the claim was otherwise properly asserted in the initial application.

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