TRADEMARK : AN INTRODUCTION

A trademark is a sign that individualizes the goods and services of an enterprise and distinguishes them from the goods and services of its competitors. A trademark may consist of words, designs, letters, numerals or packaging, slogans, devices, symbols, etc. It is that area of intellectual property whose purpose is to protect the name of the product rather than the invention or idea behind the product.

Trademarks are protected by International agreements and protocols like Paris Agreement, TRIPS Agreement, Montreal Protocols and national legislation of individual countries.

 

TRADEMARK REGISTRATION IN INDIA : A BRIEF

In India, The Trademarks Act, 1999 lays down the laws for Trademark Registration in India. The Trademarks Act is in consonance with the TRIPS agreement. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark or online brand protection in India for goods and services and also to prevent fraudulent use of the mark.

As per the provision of Section 2 (b) of the Trademarks Act, of 1999, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and a combination of colours”. A mark can involve a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such packages.”

EXAMPLES: –

Some examples of Trademarks can be words like “Dell’ for computer brands; Axis Bank for a bank, The style and way of writing Coca-Cola, Louis Vuitton, Burberry; slogans LG’s “life’s good”, symbols like the star for Mercedes Benz, the flying lady for Rolls Royce etc.

A trademark can be a registered trademark or an unregistered trademark. Trademark Registration in India is not compulsory, but it is advisable to do so.

Trademarks can be owned by individuals, companies, start-ups etc. But the two basic characteristics for a trademark: it must be distinctive and it should not be deceptive. Trademark registration in India can be done at a governmental agency, which is the Trade Mark Registry which was established in 1940.

 

Components of a Trademark Registration in India

The main components of a Trademark registration online are that it should be distinct and not deceptive.

Distinct means it should be by its very nature be distinguishable from other goods and services. For example, when you hear Microsoft what comes to, your mind is that of the software. It is unique in itself, no software existed with this name before it. Hence, it will be regarded as a trademark.

The other basic requirement is that the Trademark shouldn’t be deceptive. As a goods or service is considered deceptive when it-

  1. It claims a quality for the goods that they do not have. Like a Juice named Natural Juice while it doesn’t have any natural ingredients. It is deceptive for the customers.
  2. It shouldn’t be very similar to a popular symbol like local cold drinks company naming the soft drinks as “Coka Cola” and writing in the same font and colour as that of “Coca cola”. A customer mostly will not be able to distinguish between the two and buy the deceptive one which doesn’t give the taste as that of “Coca cola”.

Another important point to be noticed while assessing the distinctiveness of a sign for a Trademark Registration India it has to be judged together with the goods or services it is to be associated with.

 

Trademark Registration in India

Trademark can be registered as well as unregistered but it’s better if you get your trademark registered as you will get many advantages over the unregistered trademark.  

In India, the Trade Mark Registry is responsible for trademark registration in India which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks.

The Controller General of Patents, Designs and Trade Marks heads the Trademarks Registry offices and functions as the Registrar of Trademarks. All the functions of the Trade Marks Registry are performed through an automated Trade Marks System.

After assent has been given to the Madrid Protocol which is a treaty under the Madrid System for international trademark registration online, the Trade Marks Registry also functions as an office of origin in respect of applications made by Indian entrepreneurs for international registration of their trademarks and as an office of the designated Contracting Party in respect of international registrations in which India has been designated for protection of the relevant trademarks.

 

TRADEMARK FILING IN INDIA – ONLINE APPLY FOR TRADEMARK

To get your trademark registered, first you need to e-register a trademark application India at trademark registration in India online portal.

The trademark application India is then examined by the Indian Trade Marks Registry, as to its inherent registrability and/or any similarity with existing trademarks.

If an objection to trademark registration in India 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 the following examination, the trademark application India is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the applied 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 be issued.

Trademark Registration in India is a long and tiring process and it takes around 18-24 months to obtain trademark registration in India in a straightforward case, without any objections or oppositions. However, once the trademark application India is filed, an application number is allotted immediately and the priority starts from the date of application. The applicant can start using the Trademark logo after the online TM application is filed.

Once the trademark registration in India is done, it is valid for a period of 10 years from the date of TM application. The Trademark registration in India can then be renewed indefinitely as long as the renewal fees are paid every 10 years.

 

Types of Trademark Registration in India 

The categorisation of TM registration online broadly can be done into: –

Conventional trademark and Unconventional trademarks.

Conventional Trademark

As per the definition is given in The Trade Marks Act, 1999 a conventional definition of a trademark is that-

  1. It should be intrinsically distinctive.
  2. It should be able to distinguish the particular product from other products.
  3. It should be capable of graphical representation.

Conventional trademarks can be defined as any trademark which is unique to the product and was identified with the origin of the product. These trademarks would usually be words, device, numeral, symbol etc.

 

Unconventional Trademark

An unconventional trademark is a type of trademark registration in India which does not fall into the category of conventional trademarks. An unconventional trademark is principally in the form of sound marks, smell marks, shape marks or colour marks.

An unconventional mark must have the communicative ability to be able to differentiate the goods and services of one person from that of another. The mark should have the potential to be distinctive.

Some of the sounds marks registered in the U.S are Tarzan’s yell, Merrie Melodies theme song, The NBC chimes etc.

The new trademark rules that came into existence on 6th March 2017 piloted in a new era for registration of unconventional marks. The new trademark rules provide for the trade mark registration in India of sound marks under Rule 26(5). Sound marks can be registered by submitting a sound clip along with the musical notations. Colour marks can be applied for by submitting a reproduction of that combination of colours. The burden will be on the Applicant to show that the colour or sound has acquired distinctiveness or secondary meaning due to continuous bona fide usage. As for smell mark registration, there is no provision till date.

ICICI Bank was the first Indian enterprise to get a sound mark registration for its jingle.

But there are quite a number of challenges before the applicant who wishes to register unconventional subject matter. Representing or proving a smell or sound can be very difficult but it has been developing over the time.

 

Classification of Trade mark registration in India

There are two types of marks – collective and certification marks.

Collective Mark

Collective marks usually belong to a group or association of enterprises. Their use is reserved to the members of the group or association. A collective mark, therefore, distinguishes the goods or services of members of the association from those of other undertakings.

The function of the collective mark is to inform the public about certain particular features of the product for which the collective mark is used. An enterprise which uses the collective mark may, in addition, use its own trademark. Example: in an association of architects or engineers, a member may use the logo of the association as well as the logo of the enterprise.

Certification Mark

A certificate mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of the origin, mode of manufacture of goods, quality or other characteristics. The certification mark may only be used in accordance with the defined standards. Example: ISO 9000.

The main difference between collective marks and certification marks is that the former may be used only by particular enterprises, for example, members of the association which owns the collective mark, while the latter may be used by anybody who meets the defined standards.

 

The process of Trademark Registration in India 

1. Before trademark filing in India or to register logo India, for the online trademark registration in India, you must search the trademark database at Trademark registration online portal, for being sure that the symbol or words or logo you want as a trademark is not already registered by someone else. This step is very essential because if you don’t search and while evaluating your trademark application India, the registry finds out it’s already registered, your TM application India will be rejected.

2. When the trademark public search is done, the application for Trademark registration in India can be filed with the Trademark Registrar, if your designs, symbols or Logos is different from the already registered trademarks.

3. The application for Trademark registration in India must be made in the manner as prescribed and the fee for trade mark registration in India must be paid.

4. The fee for online apply for Trademark is Rs. 4500/- for Individuals, Startups and SME businesses and Rs. 9,000/- for Other entities.

5. You can make an application for a trademark registration in India in the method as prescribed in form TM-A. TM-A form is provided on the Brand name registration India website.  

6. Trademark filing in India can also be done online through Registered Trademark Attorney in India or Trademark agent over the internet.

7. Next step in the Trademark Registration Online process is Vienna Codification of trademarks, which was initiated by the Vienna Agreement (1973). It is an international cataloguing of the Figurative components of trademarks.

8. Once the Trademark registration online application is filed, the Trademark Registrar will relate the Vienna Classification to the applied Trademark.

While this work is in progress, the online trademark registration in India application status reflects “Sent for Vienna Codification” accordingly.

9. When Vienna Codification is finally done, the trademark registration online application will be given to a Trademark Officer.

10. The TM Officer would then review the TM application India to check any errors and issue a trademark examination report if any error is found.

11. The TM Officer has the power to accept the trade mark registration in India application and permit for TM Journal Publication or object the Trademark registration online application as he/she deems fit.

12. If the trademark registration in India application is objected to by the TM Officer, the TM applicant has the remedy to appear before the Trademark Officer and address the objections raised.

13. If the TM Officer contends with the appeal of the trademark applicant, the trademark would be permitted for TM Journal Publication.

14. In case the TM Officer is not pleased with the appeal, the applicant of the trademark registration India has the right to put forth the decision of the Trademark Officer before the Intellectual Property Appellate Board.

15. When the application is passed by the officer without any objection, the Trademark is published in the TM Journal.

 

Trademark Journal Publication

The TM journal is published weekly. Once the trademark is published in the Journal, the public has the opportunity to object to it if they have significant grounds. The third party has to file the TM opposition within 3 months from the date of publication of the Trademark registration in India.

If the mark is objected to, a hearing is held by the Trademark Hearing Officer. In this TM hearing, both the parties are given a fair representation to put forward their cases. For representation, several trademark attorney in India provide litigation services.

Upon hearing both parties and based on evidence at hand, the hearing officer will pronounce his judgment. An appeal can be made against this decision to the Intellectual Property Appellate Board.

If there are no oppositions within 4 months from the date of publication of the trademark registration in India in the Trade Marks Journal, then the TM registration certificate will be generated.

 

Major Reasons for Online Trademark Registration in India (7 Reasons)

  1.  Multi-class Trademark application India are permissible. Though, statutory filing fees will be applicable to each class.
  2.  Classification of goods and services is according to NICE classification (45 classes).
  3.  Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a “proposed to be used” basis.
  4. Trademark Application India are examined as to registrability and availability based on the existence of prior filed applications. Once accepted, it is published in the Trademarks Journal and opposition may be filed by a third party within 3 months (extendable by one month). If no opposition is filed, the TM registration certificate is issued thereafter.
  5. A trademark registration In India may be subject to removal on the grounds of non-use if it is not used for a continuous period of 5 years.
  6. The Trademark registration in India is valid for 10 years from the date of trademark application India and can be subsequently renewed every 10 years by payment of renewal fees.
  7. Priority can be claimed provided the TM application India is filed within 6 months from the date of trademark filing in India or the convention country.
  8. Online Trademark filing in India eases the procedure to register logo India or for online brand protection in India and this has resulted in huge number of Trademark registration in India. Businesses are lining up to the trademark attorney in India to protect their business interests thereafter.

 

Benefits of Trademark Registration in India 

  1. Trademarks can also be dependent on images or designs or indeed the combination of images and words. To get a trademark known and respected requires considerable investment and usually quite a period of time. Therefore, it is in the interest of everyone seeking to use a trademark to make sure that it is protected as a valuable piece of intellectual property.

      2. Trademark must be registered as once it has been registered it is protected, and its owner is entitled to prohibit others from using it.

      3. Unregistered trademarks are also protected but it is a less reliable form of protection. This is because an unregistered trademark is not             protected until it has acquired sufficient distinctiveness and a reputation in the marketplace, which can take considerable time after the initial launch.

However, if you just started marketing your products under a new trademark that nobody knows, that trademark will be very vulnerable. It is possible to call on the protection conferred by the laws on unfair competition, but there too the most important thing is that the mark must have acquired a reputation.

  1. Trademarks typically identify individual enterprises as the origin of marked goods or services. Some countries provide for the TM registration online of collective and certification marks, which are used to indicate the affiliation of enterprises using the mark, or which refer to identifiable standards met by the products for which a mark is used.
  2. Trademark Registration in India online confers a monopoly right to the mark in a specific territory. It allows the owner of a registered trademark to avoid unauthorized use of his mark in relation to products or services. The infringement of registered trademarks can initiate legal suits and the burden of proof of the plaintiff is eased because of TM registration online.
  3. Trademark Registration in India or elsewhere provide safe sanctuary to the business interests of many businesses active within the territory of India. These businesses are very much interested in online brand protection in India so that their reputation or well known Trademarks remain protected during the entire period of their business’s life. Online apply for trademark has made this easy for them to save their precious time and at the same time get their TM registration Online done by any trademark attorney in India.

 

Documents required for Trademark Registration in India 

  1. 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.
  2. If the applicant is a company, the country or state of incorporation.
  3. Digital signature
  4. A list of goods and/or services for which registration is required.
  5. Soft copy of the trademark to be registered.
  6. If the mark contains or consists of non-English words, a translation of those words into English is required.
  7. If the trademark application India is to claim priority from an earlier filed convention application, details of that TM application are also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the trade mark application in India.
  8. Date of first use of the trademark in India, if at all used.
  9. Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.
  10. MSME Certificate, in case of SME Enterprises, to certify the same.
  11. Date since Trademark is to be used.
  12. An affidavit, if the trademark for which the Trademark filing in India is done is already under use.
  13. Any other information linked with the Trademark registration in India.

 

Advantages of getting Trademark Registration in India 

  1. Trade mark registration in India offers trademark certificate which gives recognition to your unique product.
  2. People identify a certain feature with your goods and services.
  3. You can take legal actions against people who try to duplicate your registered trademark and use it with malafide intentions and cause monetary loss to you. In case of any infringement (which happens only if trademark registration in India is done, otherwise relief can be claimed under “Passing off” under civil laws of the country), injunction can be granted from the court as well as monetary compensation if any monetary loss has been caused due to the infringement of your registered Trademark.
  4. Unlike an unregistered trademark, you don’t have to struggle to protect your trademark.
  5. Once registered it will be uploaded in the databases and people who get the idea of a design similar to yours won’t be able to obtain it.
  6. It makes other people’s life easier as well as they also get the information that somebody already owns the design or symbol. In other words, trade mark registration in India tells the people the source, quality and other details by just seeing the product.
  7. It gives you a monopoly over the trademark for at least 10 years. This monopoly can be extended indefinitely with the timely renewal of trademark registration in India.
  8. You can use it even when your trademark has not been approved.
  9. The charges for getting a trademark registration online is very affordable in India.
  10. You can further register it internationally under the Montreal protocol.
  11. Gives you more solid enforceable rights to prevent others from using the trademark in connection with the goods or services for which it is registered.
  12. Trademarks registration in India can be sold, licensed or assigned and only you have that power.
  13. Registration usually covers the whole of India so you can freely continue your trade and business in the whole of India.

 

FAQs related to Trademark registration in India

What is a trademark ?

Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and a combination of colours”. A mark can involve a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such packages.

Who can get a Trademark registration in India ?

A sole proprietor, a company, a start-up, an entrepreneur or any enterprise can get a trade mark registration in India.

In India who is the governing body who does TM registration online ?

The Trade Mark registry controls the trademark registration in India.

Where can I file a trademark application India for registration of a trademark ?

Trade mark registration in India online portal is the website to file an application for trademark registration in India.

Where can I find out whether a trademark is already registered in India ?

A search of the Indian Trademark Registry database will indicate whether there are any marks identical or similar to your trademark in India. The trademark public search can be conducted in the official Trade Mark Registry website in India.

What is the period for which the registration of the Trademark is valid ?

The period for which your trademark is protected is 0 years. Then again you have to renew it.

How long does it take a trademark registration in India ?

Trade mark Registration in India is an extensive process and it takes around 18-24 months to obtain registration in a straightforward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing. So you can start using it.

Can a certain specific smell or sound which is very unique to the brand be registered under TM registration online portal ?

Yes, it can now be registered under new rules of trademark released in 2017. They come under unconventional trademarks but the applicant has to take a greater burden to prove its uniqueness.

What does the status: “send to Vienna for codification” means in trademark registration in India?

It means the application is under verification under Vienna codification.

What does the status: “objected” means in trademark registration in India ?

It refers to the process in which the trademark trainer verify and examines the trademark application for further modification in the Trademark registration in India.