When one invests considerable amount of time and efforts in bringing out a unique brand or mark and someone else copies the same or uses deceptively similar mark or brand, the original owner obviously gets frustrated. And if the same person has not registered the mark then it ensues a long legal battle to establish who first used the said mark. So, it is always better to get the brand name or mark registered as soon as possible to avoid any legal hindrances. A trademark distinguishes the original and unique mark of one from that of other’s and includes shape of goods, packaging or combination of colors which can be graphically be expressed. [Sec 2(o)] In India, trademark is protected by the Trademarks Act, 1999 and it grants protection for a period of 10 years subject to renewal. The procedure for trademark registration is simple and once registered a trademark registration certificate is granted. Only a certified copy from the registry can be used for all legal purposes.
So now what is a certified copy. As per trademark law, it is a document which;
- Has got an entry in the trademark Registry,
- Capable of using in judicial system, and
- Which bears certification from trademark Registry
To obtain a certified copy, one must apply online to the trademark Registry as soon as the registration is complete in TM-M form along with prescribed fees to obtain the certified copy. It is not to be confused with digital or e- certificate. The latter is easy to download and easy to access but cannot be used for legal proceedings or for applying abroad.
The Delhi High Court recently issued directions for time bound issuance of TM certified copies. These were passed in pursuance of the revision petition filed by the Registrar of trademarks (C.R.P. No. 146/2015).1
Some of the directions of the courts are as follows:-
- To appoint a nodal officer if not already there to receive applications for certified copies and to issue the same.
- To disclose on the website of the registry the name, address, contact information and other necessary details of the nodal officer within 2 months from the date of order.
- To make available online accessibility to apply for certified copies within 6 months.
- To make available the status of the application and any defect which needs to be corrected by the applicant and the date on which the certified copy will be ready.
- To send notice of such defect in application to the applicant via email, message or any other modes of communication.
- To issue the certified copy within one month from the date on which the application is send without any defects.
J. Endlaw aptly observed in his order that, * “Once the Registrar of Trade Marks has implemented the aforesaid, it is expected that neither will any of the parties to the litigation nor any of the Courts, where such litigations are pending, would mechanically issue summons to the Registrar of Trade Marks as witness, requiring it to produce records unless reasons are recorded as to why the purpose of summoning cannot be served by obtaining certified copies and tendering the same in evidence.”2
Certified TM copies are of importance due to its evidentiary value in the courts. From a legislative standpoint, there is no requirement of amending the trademarks law. However, it is necessary to speed up the process for which the Delhi High court has already given certain directions. Now its time to implement this effectively without any failure.
- Sreyoshi Gupta, Delhi HC Issues Directions for Time Bound Issuance of Certified Copies of TM Records, SPICYIP, (Nov 29, 2021, 3: 49 pm), https://spicyip.com/2017/08/delhi-hc-issues-directions-for-time-bound-issuance-of-certified-copies-of-tm-records.html.