This article is written by Khyati Basant, pursuing BBA LLB from Symbiosis Law School, Noida. This article provides information about the registration of trademarks in India.
Suppose that you have created a logo for your stationery brand. You have also created a tag line for your brand. You are using your logo and the tagline for your business and now you are worried that someone might use it to his/her profit. What will you do?
Have you ever noticed the different symbols, marks, letters that you are surrounded with? For example, McDonald’s mark (the yellow M), the Apple logo, the Starbucks logo (the mermaid), the Nike Swoosh.
How are these marks or symbols not used by anyone else? What is the law that safeguards it? How can you get it registered for your logo? Getting your logo, symbols, letters, words, figures as a trademark might help in legally protecting your novel creation.
Trademarks are the right given to a person who has created his logo or symbol or tagline for his business. Trademarks are a type of intellectual property that recognizes labels, designs and expressions that helps in the description of any kind of product or services.
Trademark is thus a unique identity which can be a logo, sign, symbol, letters, words, taglines that are created by an individual that makes the product or the services stand out from the rest.
A trademark is another name for the brands.
Signs or Logos for the expression of any kind of services are thus called as service marks. For example, the title United Airlines and its logo (the world map) are service marks.
There are seven kinds of trademarks:
- Product mark
- Collection mark
- Certificate mark
- Shape mark
- Pattern mark
- Sound mark
Need for registration of the Trademark
Trademarks are important for a business. A consumer’s purchasing pattern might depend on the trademark of the company. It is thus important for a business person to know the importance of registering a trademark.
This gives the legal owner a right which can help them to safeguard their marks from being copied or used by any other person for his/her economic benefit. Thus, it is important for a businessman to know its importance for the growth of their business.
Importance of trademark registration is governed in India by the Controller General of Patent, Design and Trade Marks, Ministry of Commerce and Industry, Government of India.
Here are some of the reasons why trademarks registration is important:
- Legal Protection: When you get your trademark registered by the laws it gets legally protected. This means that when you feel that another party has copied your logo or symbols you can take the case to the court and can sue them. But this can only happen when you have got your logo or your symbol registered. Trademark in India is registered under Trademark Act 1999.
- Easy and Unique Identification: Trademark helps in the easy and unique distinction of your product from the rest. Once the product has got a trademark under the Act, the customer may find it easy to locate your brand by its logo and name. Registration will guarantee that your logo is not used by any of the competitors. This will give your brand a unique identification.
- Intangible Asset: Trademarks, when registered, becomes an asset for the company. Trademarks become the most useful asset for the company. It can help the company to earn profits in the long term. Trademarks can be transferred, sold or franchised. Thus, it helps the company in the expansion of its business. Many companies have expanded their business because of this. For example, ARMANI has expanded its brand from runway appearances to perfumes and now to eyewear.
- Goodwill and Trust: Once your logo is trademarked the customers start to recognise your brand. This helps in brand development which further leads to creating goodwill and trust among the customers. The goodwill of your brand will help in further growth of the business. Goodwill will make the customers loyal to your brand.
- Global Recognition: Your products’ trademarks are not restricted to the boundaries of India. Once a trademark is filed in India it can also be filled in any foreign state. Thus, foreigners can also file a trademark in India.
- Economic Communication Tool: Trademarks are easy to communicate despite the barriers like language and culture. Trademarks will help the customers to easily locate you and connect you especially when there are a lot of competitions in the market. The customer may easily select their desired products thereafter.
How is Trademark registered in India?
Some important points must be understood to know the registration process of trademarks in India. Some of these points are discussed below:
The law that protects the trademark rights in India is the Trademark Act, 1999. This act helps in protection of trademarks by the Controller General of Patent, Design and Trademarks, Ministry of Commerce and Industry, Government of India.
The law of trademark provides various statutes and provisions that help the trademark holder’s rights to be secured. It helps in making and filling of the application, rights guaranteed in case of any infringement, modes to transfer the rights, remedies available to the owners.
The first statute for the protection of trademarks was the Trade Marks Act, 1940. This Act was very much similar to the UK Trade Marks Act, 1938. Later this act was replaced by the Trademark Act 1999.
What can you Trade Mark and Who can apply for it?
These are the most basic questions that arise in one’s mind. So let’s tackle them first.
Trademarks protect an individual’s creation of an expression to represent his/her business. It safeguards the rights of the holder by not letting any other organisation copy and take credit of your work. The things that can be trademarked are logo, symbols, letters, tagline, name, pattern or any distinct design that has been created by an individual.
The second most basic question is who can file for a trademark?
Trademarks can be filled by an individual or an organisation or by a private limited company or by Limited Liability Partnerships or even by a Non- Government Organisation. It is thus interesting to know that an individual who does not have a business can also file for trademarks. The only requirement, in this case, is that the full name of the individual is required.
Things to be aware of before Registration
Now comes the question of what are the small things that we need to remember before the registration to be done?
These are the points that must be briefly gone through before the filling of the trademarks.
- Trademark – An Investment: It is important for the holder to consider the trademark as an investment for the business. Trademark represents the brand. It is the asset that will help the business to have monetary benefit in the long term. Trademarks will give goodwill to your brand. It will help the customers to select the product in this competitive world. Thus, a trademark should be considered as an investment in the business as it will bring monetary value.
- Protection and Wise Selection: It is important to note that once you have selected your brand name and logo it is not very easy to change it afterwards. You might need some legal help and a lot of cash while altering the logo or the name. It is also important to protect the brand name. Thus, when you find an individual having the same logo, you deal with that respectfully and legally.
- Pre-Filing Search: Once the party has selected its brand name it must make the parties go through a search to check whether their trademarks have already been registered or not. If while the search no identification is found the party makes go forward to the next step which is filling the application.
- Trade Symbols: Different types of trade symbols are used.
- R symbol – You get this symbol after the application of registration. It helps to protect the product from being copied.
- ™ symbol – This is the symbol of unregistered products. It safeguards the rights that the logo and symbols will not be copied by some other organisation.
- C symbol – This symbol is for the copyright.
- SM symbol – this is a symbol for service providers. It has not guaranteed copyright rules.
5. Research: Lastly do a quick research about the application process before registering it. This might give you an overview of what is the procedure? What are the steps involved? It will give an edge over the others.
Documents Needed for Registration
An application is filled to the officials regarding the filling of the application. Once the confirmation has been received for the application, the documents must be assembled.
After the confirmation, the ™ sign is used by the owners.
The documents required are:
- The copy of the trademarks or the logo of the brand.
- A duly filled application form is to be submitted.
- Goods and services registered.
- The details of the applicant, such as name, address and nationality.
- The type of business you are involved in.
- Registration address.
- The objective of the business.
- The applicant has to sign the power of attorney.
Steps Involved in Registration
Trademark registration will give the owner the right to sue another person who might have used his logo, symbol or name. The owner will have a legal backup.
Trademarks are of cardinal importance to the business. It is one of its most valuable assets.
In India, a series of steps are to be followed while registering it.
Step 1 – Select your unique Brand Name
This might sound an easy task but this is the most crucial task for a businessman. The trademark must be selected or created very wisely. This is so because once the trademark has been made there is no chance of editing it later. The process of altering later will involve a lot of legal process and money. You don’t want to get in there. So it is advised that the creation of the trademark must be satisfactory. Once you have created your trademark it is important to make a trademark search.
Step 2 – Trademark Search
Once you have created your brand name and logo the next step is to make a quick search whether your mark has been registered before by anyone or not. If it has not been registered before. You can take it to the next step of class selection. If your brand name or the logo has already been registered by someone, there are a few procedures that will help you modify your brand so that the registration is not cancelled.
Step 3 – Class Selection
The Trademark Registry has a total of 45 Classes. Now, what is a class? The trademark provides your product or services to be classified under the heads of different sectors. Each of these sectors is known as class. For example, Class 1 is for chemicals, raisins and plastics. Thus if you are planning to create a chemical brand, Class 1 is for you.
Step 4 – Making the Trademark Application Form
Once you are done with the class selection the next step is the preparation of the application form. Some documents are required to be submitted with this:
Business Identity Proof – A proof of the business is required based on the sole proprietor or a partnership or so on. Proof of the business address must also be submitted.
Trademark copy – a copy of your brand name is also to be submitted with the form.
Proof of the claim of the proposal marked must also be submitted.
Power of attorney is to be signed and submitted by the owner.
Step 5 – Filling of the Application Form
Now the step comes to fill the application form. Once the form is filled the acknowledgement can be received immediately in case of e-filing of the forms. Once you have received the acknowledgement you can now use the ™ symbol. The applicant gets two chances to fill the application form. This means that if your form is rejected at the first go you can refill the form.
Step 6 – Examining the Logo and the Brand Name
After the filling is complete, the registrar will go through your logo and brand name and will check whether there is any change that is required due to the laws. He checks whether it infringes any rule.
Step 7 – Publication or Advertisement
This is also one of the important steps in the process. Once your trademark has been examined it will now be published by the Indian Trade Mark Journal. If there is no opposition to your brand name within 3 months then your brand name is proceeding towards acceptance.
Step 8 – Registration or Insurance
After completion of the 3 months, when no opposition has been made to your brand name, the registrar will issue a Trade Mark Certificate. Woohoo! Now you will be able to use the R symbol next to your brand name.
Trademarks in India can easily be made online. All you need a laptop and an internet connection.
Advance technology has helped in the ease of making the registration process from the comfort of our homes. Help from the trademark attorney can be taken to apply for the registration.
Trademarks in India can be registered online as well as manually. The major difference is that in the manual filling of the application you need to go to the Trade Marks Office and fill the form there. The acknowledgement of the form will be received after 15-20 days. But in case of e-filing, the acknowledgement will be received immediately after you have filled your form.
Cost of the process
Trademarks involve a lot of steps. Different amounts are charged at different steps. The amount required is:
Trademark search might cost you INR 0-500 depending upon the lawyer you might have hired. While filling the application INR 3500 – 4000 is the fee that is required online. If you have hired a professional he might charge approximately INR 3000-3500 in this process. In case if there is any rejection from the Trademark Registry, INR 3000-4000 might be charged by the profession upon each reply that has to be made to the Trademark Registry. This might vary to different professions who might charge more or less depending upon their experience.
Time taken for Registration
The time taken for the registration of the trademark is about 1.5 to 2 years. It is thus a lengthy process. You can get the ™ symbol within 3-4 days of the application but to get the R symbol it takes about 2 years to receive that. In case your trademark gets expired after 10 years you have to renew it.
There is a 10 year validity period that is given to a trademark from the date of applying. It is renewable for as many times you want to renew it for 10 years. A renewal must be filed within a year before the expiry of the term of 10 years. If the renewal is filled in the last year, a surcharge will be granted. The process of renewal includes that you get the help of a profession so that it is easy for you to have legal support in case any corrections have to be made in the renewal.
Remedies in case of Infringement of Trademarks
What is a trademark infringement?
- When the rights of the owner of a particular trademark owner are violated by someone it is known as trademark infringement.
- This is mentioned in Section 29 of the Trade Marks Act.
In which jurisdiction the suit may be filed?
- The suit for infringement of the trademarks can be filed before the District Court.
- Section 134 of the Trade Marks Act provides the jurisdiction.
What are the remedies granted for the infringement?
Three civil remedies are granted to the owner of the trademark:
- Damages- This simply means that the person who has infringed the rights of the trademark owner will have to pay the damages that he has incurred. The person might compensate in monetary terms.
- Injunction- injunction means to restrain a person from doing something. Here it refers to stopping the person from the use of the trademark of the owner by the order of the court.
- Custody of the material- As simple as the word suggests, this means that the owner can have the custody of the products that are labelled with his brand name. In the case of service marks, the infringer has to stop the performance of the service immediately.
- A criminal complaint can also be filed under the Trade Marks Act. FIR can be filled by the owner of the trademark holder.
Trademarks are the most important asset to the business. A brand name will help the customers to locate you easily. This will help in business growth. Once the customer is happy by the purchase your brand will be remembered. This will create goodwill.
Getting your trademark registered in India is probably the most lengthy task. It takes years to get your trademark registered but the process is so worth it. This is an investment that you make for your business.
There are a lot of steps and a lot of money that is involved in the process. If you are a beginner, trademarks might not be essential for you.
You must be very careful while deciding the logo or symbol of your brand because there is no going back. Once you have got your symbols registered, the alteration process is very difficult. Thus it is recommended to choose or create wisely.
In India, a lot of businessmen are aware of the trademark policy. There are only a few who have the full knowledge about this. People are becoming more and more aware of this. It is so important for them to know about trademarks.
Violation of the rights of the owner can degrade the reputation of the brand and can hinder the business. It is necessary to take effective steps when it comes to saving guard rights.
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