TRADEMARK REGISTRATION IN INDIA

TRADEMARK REGISTRATION IN INDIA

Introduction 

This article talks about Trademark registration in India. It starts off with defining trademark and lists down the reasons as to why is it important to get your trademark registered under the prescribed laws. Then it explains in detail about the registration process of India. It jots down documents required for registration, steps involved in the registration process, cost and validity of trademark registration. 

In essence, Trademark is a territorial right and can be defined as, “a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.” In simple terms, it is a tool which helps deliver the level of authenticity to the consumer. Furthermore, it simplifies the process of identification of products and services offered by various competitors in the market. The most important attribute of a trademark is that it should be distinctive in nature and not deceptive. Other attributes include, its source, quality, advertising and goodwill.

Typically, a trademark consists of designs, words, phrases, letters, slogans, numerals, symbols, sounds, 3D marks, combination of colours, device, etc., for instance, Ford is named after Henry Ford. Moreover, generic terms such as pen, cupcake, fan and software cannot be trademarked because such terms are used to identify the type of good or service, meaning they are not exclusive in nature. Contrary to this, there are certain names which are generic but still have been granted trademark protection, and one such brand is ‘Apple’. 

Trademarks in India are governed by the Trademarks Act, 1999, which provides for various provisions that safeguard “the trademark holder’s rights, confers rights in case of any infringement, modes to transfer the rights, etc.” In addition, it also seeks to provide for the registration of trademarks relating to goods and services in India. 

Territorial Jurisdiction in India

Mumbai Office

Maharashtra, Madhya Pradesh and Goa

Ahmedabad Office

Gujarat, Rajasthan, Daman, Diu, Dadra and Nagar Haveli

Kolkata Office

Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Nagaland, Sikkim, Tripura, Andaman & Nicobar Islands

Delhi Office

Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Delhi and Chandigarh

Chennai Office

Andhra Pradesh, Kerala, Tamil Nadu, Telangana, Karnataka, Pondicherry & Lakshadweep

 

Need for Trademark Registration

Registration confers the legal owner a right to protect their marks from being copied or used by any other person for commercial purposes. 

  1. Legal Protection: When a trademark is registered under the applicable law, i.e., Trademarks Act, 1999 it is legally protected, meaning the owner of the mark has the right to sue any person or organization for infringement, if they are using the registered mark without prior permission.

  2. Identification: It helps in easily identifying and distinguishing your goods and services from that of the competitors, by providing unique brand identification. Registration ensures that competitors and fraudsters do not use your mark for commercial or fraudulent purposes.

  3. Intangible Asset: Registered trademarks are intangible assets of the business and help increase profits in the long term. These can be transferred, sold or franchised, thus helping with expansion of business. 

  4. Goodwill: Registration of the brand name or logo help in recognition and marketing of the brand, thus creating goodwill and trust among the consumers. Goodwill being one of the most important business assets, helps with exponential growth and valuation of the business.

  5. Global: In this fast-paced world, tech-savvy and social media driven world, goods and services are not restricted by boundaries. This signifies the need for protection internationally too. The Madrid System is one such system which provides for universal trademark protection.

  6. Communication Tool: Trademarks have the ability to overcome cultural and language barriers and easilycommunicate with the masses. Such marks help consumers relate to the brand and differentiate it from the competitors.

Documents Needed For Registration

The following documents are required during the process of trademark registration.

  1. A copy of the name or the logo of the brand.

  2. A duly filled application form. 

  3. The details of the applicant, such as name, address and nationality. 

  4. The type of business you are involved in.

  5. Registration address.

  6. The objective of the business.

  7. The applicant has to sign the power of attorney. 

Process of Trademark Registration

The process of registering a trademark is a lengthy one, involving several steps.

Step 1: Trademark Search

The very first and the most important step in the process of trademark registration is a trademark search. It is a basic yet an intricate search to confirm and verify if your business logo is similar to any other pre-existing registered trademark in that particular class. The search can be either done offline or online, but it is always beneficial to undertake both the searches. A public search can also be carried out on the trademarks database, available with the Trademarks Registry. In conclusion, it is a basic yet an intricate search to confirm and verify if your business logo is similar to any other pre-existing registered trademark in that particular class.

Total Classes: 45

Class 1 - Class 34: Goods 

Class 35 – Class 45: Services

Step 2: Trademark Application

Based on the trademark search results and provided that your logo is found to be unique, a trademark application (Form TM) has to be drafted and filed either online or offline at the Trademarks Office. The application can be filed either under single-class or multi-class depending upon the intended use. In case the application claims prior use, then an affidavit and valid evidence has to be filed supporting such usage. 

Step 3: Application Examination

Once the trademark application is filed, a mandatory examination, in accordance with the guidelines of the Trademarks Act, 2016 is carried out by a competent examiner and a report is issued on the same within a period of 30 days of filing the application. Further, a reply to the report is to be filed within 30 days after receiving the report, stating arguments or evidence against any objections raised, so as to waive them off.

Step 4: Post- examination          

After filing a reply to the examination report, the examiner, if still not satisfied or if the objections are not met, may call for a hearing. Once the said hearing is complete, the examiner might either accept the mark and forward the application for publication in the journal or reject the application in case objection still lasts.

Step 5: Advertisement of the Trademark        

After acceptance of the application, the said trademark is advertised and published in the Trade Marks Journal for a period of 4 months. This is done to invite opposition if any from the general public. 

Step 6: Opposition from General Public

Post the advertisement and publication, any aggrieved person can file a notice vide Form TM-O within 4 months of such publication, to oppose against the said registration. If there is objection with respect to the application, then a counter-statement is filed along with evidence and a hearing may also be held. In case, there is no objection from the general public, an auto-generated trademark registration certificate is issued within a week’s time.

 Step 7: Registration of the Trademark

Finally, after all the objections are met, the application is forwarded for registration. After successful registration, the trademark is valid for 10 years, after which it has to be renewed for the next 10 years, within a specified time period.

Note: There are various costs involved at every level of the process. Such costs vary depending upon the subject matter and other complexities of the case.

Timeline for Trademark Registration Process | Legalwiz.in

Grounds for Refusal

Section 9 of the Trademarks Act, 1999 provides for absolute grounds on which a trademark application can be refused and Section 11 of the same provides for the relative grounds for refusal of registration.

Cost and Time

Since, the process of trademark registration is a lengthy one, involving various steps, a lumpsum amount is not feasible. Therefore, different amounts are charged at different steps. The complete fee structure can be accessed through the official website of Intellectual Property India [https://ipindia.gov.in/form-and-fees-tm.htm].

1.5 years – 2 years is the approximate time taken for the registration process to be completed and a ® symbol to be granted. Although the ™ symbol is obtained within 3 – 4 days of the application.

Validity of a Trademark

The validity time-period of a trademark is 10-year from the date of applying. It can be renewed any number of times but only for 10 years at once. Hence, it is mandatory to renew the trademark every 10 years and such renewal must be filed within a year before the expiry of the term of 10 years. A surcharge will be levied in case the renewal is filled in the last year. In case a trademark is not in use for 5 years continuously, it will expire.

Restoration

In case the trademark has been eliminatedfrom the Register of Trademarks on the grounds of non-renewal then the same can be reinstatedby filing an application in the prescribed form for restoration of the mark after six months and within one year from the date of expiration of the last registration of the mark.

References

  1. https://www.mondaq.com/advicecentre/content/3286/Trademark-Registration-in-India

  2. https://blog.ipleaders.in/how-is-trademark-registered-in-india/

  3. https://www.advocatekhoj.com/blogs/index.php?bid=3904f28db2c126af120057652&bcmd=VIEW

  4. https://www.obhanandassociates.com/blog/trademark-registration-stages-process-and-timeline-in-india/

  5. https://ipindiaonline.gov.in/eregister/eregister.aspx

 

BY SALONI SANCHETI