This article has been written by Adv. Rashi Chandok, working with QuickCompany. It gives an overview of the concept of trademark and the registration process followed, addressing the reasons for a hike in trademark registration.
It has been published by Rachit Garg.
In order to understand the word “Trademark”, it can be divided into two parts i.e. “trade” and “mark”. It means a mark used to identify a trade or a brand. Trademarks date back to 3000 years ago when Indian craftsmen and artisans used to carve their signature or a particular mark on their items to differentiate them from the competition.
The Barber’s pole, which used to designate the location of a company, was one of the greatest examples of both ancient and modern trademark usage. In medieval England, sword manufacturers were compelled to employ identification markings to trace faulty weapons back to the manufacturer for possible punishment.
Before the enactment of statutory law, trademarks prevailed as common law marks. The need for a law on trademark registration and protection against infringement was recognized, giving scope for the first statutory enactment in Britain in 1875.
India adopted the British Trademark Act of 1938 and drafted the first Trademark Act of 1940. The Trade & Merchandise Mark Act, 1958 was drafted by independent India. The Act is currently known as the Trademark Act of 1999 (hereinafter referred to as “the Act”), and it went into effect on December 30, 1999.
What is a Trademark?
“Trademark” is intellectual property in the form of a word, logo, design, or expression that helps differentiate one product or service from another and identify the source of the same.
Trademark Registration is a very important step in order to protect the brand name. However, It is not mandatory to register a trademark.
A registered trademark prohibits others from utilizing a company’s or an individual’s product or service without authorization. They also restrict any markings that may be confused with an existing one. This implies that a company can’t use a symbol or brand name that looks or sounds similar to, or has a similar meaning to, one that’s already registered—especially if the products or services are connected.
Benefits of Trademark Registration
Trademark Registration is beneficial for every brand owner. The benefits are as follows:
- Protects investment in Advertising & Branding
- Trademark Registrations is an Asset
- Trademark Registrations is valid for 10 Years
- Protects against unfair competition
- Exclusive Rights
- Legal Right to Use the ® Symbol
- Safeguard Against Infringement
Who is eligible for a Trademark Registration
Any individual or an organization is eligible to register a trademark for its product or service. To discuss in detail, here is the list of organizations that are eligible to trademark business names, and it is as follows:
A Proprietorship firm
A sole proprietorship firm is not a distinct legal body, and the individual who operates the business is entirely liable for its obligations. It is one of the simplest business formats in terms of cost, degree of upkeep, and setup. As a result, a proprietorship firm can file a trademark application on its proprietor’s name but not both the business and proprietorship names. If you offer a proprietorship name and a business name in your application, those data will be reviewed separately.
A partnership firm is created when two or more persons manage a business together as partners with the goal of obtaining profits that are equitably divided or as specified in their agreements, as governed by the Indian Partnership Act. A partnership corporation must include all of the names of the partners in the application when filing for a trademark, with a maximum of ten. If a minor partner is present, must mention the name of the minor’s guardian.
It includes all types of companies like a public company, a private company, or any other type of company. It should be emphasized that each incorporated business has its own identity hence a company’s director cannot be a trademark applicant. Therefore, the director is the authorized signatory in the trademark application of a company.
Charitable society or trust
Trust or Society organizations are those that are formed with the goal of providing a social benefit rather than profit. Suppose it is founded based on a formal agreement in which a beneficiary retains the property and nominates trustees to govern the assets and activities. In that case, it is referred to as a trust. If a group of people gets together to achieve a common goal, it might be registered as a Society.
Both a Trust and a Society can register a trademark as long as it is done on behalf of the Trust or Society. The names of the Chairman, Managing Trustee, and Secretary are included in the application.
A company’s joint proprietors can apply for a trademark together, and both of their names must be listed in the application.
Individuals who desire to register their own unique phrases or symbols may do so under their own names. However, they are not required to do business.
Only organizations that have registered their trademarks may originate, establish, and defend their commodities, services, and products, preventing others from using their mark illegally.
Types of Trademarks
Trademark a name is one of the most common types of trademarks that can be registered. It helps in creating a brand name for any product or service. If the product or service name is in the word form then it will be registered under “Word Mark”. For example Flipkart, Parle-G, etc.
The trademarks registered under this represent a service provided by a company or an organization in the market. Service marks can be registered under classes 35-45 of the Act. For instance: FedEx, etc.
Shape marks are also termed as “Trade dress” (shape of the product), The commercial appearance and feel of a product or service that identifies and differentiates the source of the product or service is referred to as trade dress. It encompasses the different aspects (such as material design and form) used to package a product or service.
Logos and symbols
Logos and symbols are also known as Device marks. It is a type of mark that is used for the purpose of marketing a product or a service. The logo must be elaborate or informative. It must, however, be unique in order to identify the goods and services supplied under the mark.
If a mark represents a group of people or service collectively it is called a “Collective Mark”. Generally, this type of mark is owned by one organization but used by a group of individuals associated with it.
If the trademark sought is in the form of a series In other words, the principal element of a mark may be used/intended to be used by the proprietor in numerous forms/ways, and instead of filing individual applications for each, they can be filed as a series. For example, McDonald’s has the “Mc” prefix almost with every product.
The Certification mark
It is a type of mark that provides a quality or standard check that the organization has achieved its product or service. The mark helps people identify a certified product or service. Therefore, a certification mark is used to define “Quality Standard” for a product or service.
A geographical indication (GI) is a label placed on items that have a particular geographic origin and have traits or a reputation that arise from that origin. A sign must identify a product as coming from a certain location in order to operate as a GI.
How to trademark a name
Now, the importance of Trademark is not unknown to everyone; we shall understand the process of Trademark Registration. There are certain steps to keep in my mind while doing a Trademark Registration:
Step 1: Trademark Search
The first essential step is to do a “Trademark Search”. It is very important to perform this step before proceeding any further. So let’s begin by understanding how to do a Trademark Search. You can visit QuickCompany.in or a website that has a Trademark database.
While performing a Trademark Search it is important to keep in mind that no similar word must be registered under the same class you want to register your brand.
Step 2: Trademark Filing
The second step involves filing a trademark application. To make sure your application is complete and as per the requirements of the trademark office, it is advisable to consult an expert like QuickCompany.
After completing a trademark search, an application for trademark registration can be submitted with the Trademark Registrar. The following information must be included in a trademark registration application:
- The Trademark or the Logo
- The trademark owner’s name and address
- Classification or Trademark Class
- Since that time, the trademark has been used.
- Product or service description
Step 3: Allotted Trademark Application
The two methods for filing the application are manual filing and e-filing (form TM-A). If you select ‘manual filing,’ you must personally transport and hand over your application for registration to the Registrar Office of Trademarks in major Indian cities such as Delhi, Mumbai, Kolkata, Ahmedabad, and Chennai.
Following that, you must wait at least 15 -20 days to receive the acknowledgment. In the event of an e-filing system, however, you will obtain your receipt of acknowledgment on the government website immediately. You will be able to use your Trademark (TM) symbol alongside your brand name after you have received your acknowledgment.
Step 4: Vienna Codification
The Vienna Categorization, often known as the Vienna Codification, is an international classification of figurative features of marks created by the Vienna Agreement (1973).
Once the trademark registration application is filed, the Trademark Registrar will classify the trademark using the Vienna Classification based on the figurative aspects of the mark. While this work is being done, the trademark application status is normally “Sent for Vienna Codification.”
Step 5: Trademark Examination
After Vienna Codification, the trademark officer examines or reviews your application and thereafter issues a trademark examination report. In case of any discrepancies, the officer has the authority to raise an objection or if satisfied with the application he shall allow for trademark journal publication.
Step 6: Trademark Journal Publication (Trademark Register)
Following the examination procedure, the Registrar of Trademarks will publish your brand name in the Indian trademark journal or trademark register. This is perhaps the most crucial aspect of trademark registration, and no objection should be filed within three months, i.e. 90 days (or 120 days in some situations), from the date of publication. If there is no resistance, the Registrar of Trademarks will issue the Trademark Registration Certificate.
If a third party objects to the trademark registration application, the Trademark Hearing Officer will schedule a hearing.
Both the parties i.e. the trademark applicant and the opposing party have the opportunity to attend the hearing and explain why the trademark application should be registered or rejected.
The Trademark Hearing Officer will decide whether the trademark registration application should be approved or refused based on the hearings and evidence submitted. The Trademark Hearing Officer’s judgment can potentially be appealed to the Intellectual Property Appellate Board.
Step 7: Trademark Registration
In case of no objection, the Registrar shall accept the application within a stipulated time period of 90 days or after the trademark objection hearing. Thereafter, a trademark certificate is issued and
Reasons behind the hike in trademark registrations
As per the Senior Examiner of Trademarks, there are numerous factors that led to simplifying the process of trademark registration. The factors are discussed below in detail:
According to the reports of the Department for Promotion of Industry and International Trade, a number of trademark examiners were hired on a contractual basis between 2015-2019 to speed up the process.
As per the Summary of Achievements by the office of Controller General of Patents, Designs & Trademarks report, the examination period of a new trademark application was reduced from 13 months to less than 30 days. In addition, a trademark can be registered in less than six months, in case there is no objection or opposition filed.
Digitisation has considerably increased the number of applications being accepted. Earlier, searching for trademarks would take much time, acceptance was minimal. Whereas now everything is online, and other comparable markings may be viewed with the press of a mouse.
A few new provisions were introduced and they are as follows:
- The registration procedure was also expedited thanks to regulations enacted in accordance with the Trade Marks (Amendment) Rules 2017. The number of forms, for example, was decreased from 74 to 8.
- Using a single application form for all sorts of trademark applications.
- Making allowances to startups, individuals, and small businesses.
- Inclusion of email as a means of communication.
- Limiting the number of hearing adjournments to two.
- For online application submission, there is a 10% reduction in the required charge.
- Video conferencing for hearings is permitted.
- Allowing for quicker trademark prosecution procedure processing.
To make trademarks more accessible to businesses, the Department for Promotion of Industry and Internal Trade offers a 50 percent discount on statutory costs for submitting applications; as of February 28, 13,703 trademark applications filed by startups have taken advantage of the incentive. 6,353 startups were issued trademarks as a result of this.
It is advisable that trademarks be registered through qualified and experienced third-party trademark agents or trademark attorneys who pass the Trademark Registry’s yearly preliminary tests. Seeking professional help has several advantages. QuickCompany assists with every stage of the registration procedure. They provide free trademark searches on their website.
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