Trademark – Know how to trademark your brand

What is a Trademark
A trademark or trade mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to uniquely identify the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. A trademark is a device which can take almost any form, as long as it is capable of identifying and distinguishing specific goods or services.
A trademark is typically a name, word, phrase, logo, symbol, design, image, sound or a combination of these elements. There is also a range of non-conventional trademark comprising marks which do not fall into these standard categories, may therefore be visible signs (e.g. colours, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).

Designation of a Trademark
A trademark may be designated by the following symbols:

  • ™ (the “trademark symbol”, which is the letters “TM” in superscript, for an unregistered trademark, a mark used to promote or brand goods)
  • ℠ (which is the letters “SM” in superscript, for an unregistered service mark, a mark used to promote or brand services)
  • ® (the letter “R” surrounded by a circle, for a registered trademark)

Indian Trademark Law

  • Indian trademark law provides protection to trademarks statutorily under the Trademark Act, 1999 and also under the common law remedy of Passing Off.
  • Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill.
  • Statutory protection of trademark is administered by the Controller General Of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.
  • The law of trademark deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark.
  • The law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

Trademark Classification in India

  • Trademark in India is classified in 45 different classes, which includes chemical substances used in industry, paints, lubricants machine and machine tools, medical and surgical instruments, stationary, leather, household, furniture, textiles, games, beverages preparatory material, building material, sanitary material, and hand tools, other scientific and educational products.
  • These classes again are further sub-divided. The main objective of trademark classification is to group together the similar nature of goods and services.

Trademark Registration

Types of trademarks that can be registered

  • Under the Indian trademark law the following are the types of trademarks that can be registered:
  • Product trademarks: are those that are affixed to identify goods.
  • Service trademarks: are used to identify the services of an entity, such as the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services.
  • Certification trademarks: are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features
  • Collective trademarks: are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.

Advantages of Trademark Registration

  • Prima-facie evidence of ownership of the trademark.
  • Important asset for your business or company and contributes to the goodwill generated.
  • Gives you stronger enforceable rights to prevent others from using the trademark in connection with the goods or services for which it is registered.
  • Trademarks can be sold, licensed or assigned.
  • Registration usually covers the whole of India.

Requirements for Filing a Trademark Application

  • The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.
  • If the applicant is a company, the country or state of incorporation.
  • A list of goods and/or services for which registration is required.
  • Soft copy of the trademark to be registered.
  • If the mark contains or consists of non-English words, a translation of those words into English is required.
  • Date of first use of the trademark in India, if at all used
  • Power of attorney simply signed by the applicant (no legalization or notarization is required).

Trademark Registration Process
Upon filing of the application, the registry will issue us with an official receipt with the filing date and number allotted to the application. The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.
If, following examination, the trade mark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue.
Trademark Registration is a tedious process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately and the priority starts from the date of application.
Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.

Trademark Registration

  • Multi class applications are allowed in India. However, statutory filing fees will be applicable for each class.
  • Classification of goods and services is according to NICE classification (45 classes).
  • Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a ‘proposed to be used’ basis.
  • Power of attorney is required (if filed through an agent/attorney)
  • Applications are examined as to registrability and availability based on existence of prior filed applications. Once accepted, it is published in the Trademarks Journal and an opposition may be filed by a third party within 3 months (extendable by one month). If no opposition is filed, the registration certificate is issued thereafter.
  • A trademark may be subject to removal on the grounds of non-use, if it is not used for a continuous period of 5 years.
  • The registration is valid for 10 years from the date of application and can be subsequently renewed every 10 years by payment of renewal fees.
  • Priority can be claimed provided the application is filed within 6 months from the date of the filing in the convention country.
  • Generally, one who has filed an application (pending registration) can use the TM (trademark) designation with the mark to alert the public of his exclusive claim. The claim may or may not be valid. The registration symbol, ®,may only be used when the mark is registered.

Some Questions

My Company Name is already registered under the Companies Act. Why should I go for trademark registration of my company name/trade name?
Registrations of Company Names, Business Names or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations.

How do I find out whether a trademark / brand name is already registered in India?
A search of the Indian Trademark Registry database will indicate whether there are any marks identical or deceptively similar to your trademark in India. The trademark search can be conducted in the official Trade Mark Registry website in India

What is the difference between trademark registration and copyright registration for logo?
A logo can be protected both under the Trade Marks Act and Copyrights Act. Trademark Registration enables you to obtain protection for the brand name and also provides certain amount of protection to the manner in which the trademark is represented. However, if you need exclusivity for the representation of your trademark or logo, a copyright registration is strongly recommended. Copyright registration does not however offer any protection for the brand name.

What is the validity of a trademark registration?
Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.

How long does it take to register a trademark?
Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.

Can I use the ® symbol?
You may use the ® (Registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Kindly note that it is an offence, with penalty, to falsely claim that your trademark is registered. Till the registration is obtained, you can represent your trademark along with the letters TM to indicate that you claim rights over your trademark.

Websites and Fee

Trademark Registration for One Class is Rs. 4,500 (Govt Charges) + GST

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