This article is written by Gaurav Raj Grover, a fifth-year law student at Lloyd Law College, Greater Noida. This article discusses the features of Trademark Registration in India.
A Trademark is a type of intellectual property. It can be a word, device, name, symbol or any combination which is acquired by any institution or company to show the difference between their product and the products of other companies. It can also be known as the brand name. Trademark can be owned by any business organization, individual or any legal entity. Rules and regulations of trademarks are governed by The Trade Marks Act of 1999, The Trade Marks Rules of 2002, and The Trade Marks Amendment Act of 2010.
History of Trademarks
Initially, Trademarks were governed by the common law which means trademarks were registered under the Indian Registration Act, 1908 by signing a declaration for ownership. In 1940, The Trademark Act came into existence and it was the first law ever on Trademarks in India which was amended by the Trade Marks Amendment Act, 1943. The trademark registry was covered under the patent office which was later separated to the trademark registry office. It was again amended by the Trade Marks Amendment Act, 1946.
On 25th November 1959, the Trademark Act, 1940 was replaced by the Trade and Merchandise Act, 1958. The Trade and Merchandise Act, 1958 was revised by the latest Trademark Act of 1999. The main purpose of this act was to improve trading and commercial practices and develop the globalization of trade and industry. The Trademark Act, 1999 was governed by the Trademark Rules of 2002.
Types of Trademarks
Various types of trademarks are registered under the Trademarks Act, 1999:
A product mark is a type of trademark which is used on a business good rather than on service. This trademark is mainly used to identify the origin of the product and helps in maintaining the reputation of the business. For example, Nestle, Amul, etc.
A service mark is quite similar to the product mark but service marks are used to identify the services of the entity rather than a product. These are used to identify the proprietors from the owners of other services. For example, the trademark for network and broadcasting services as they help the service provided. Applications that are filed under trademark class 35-45 represent the service mark. For example, Apple, Google, etc.
A collective mark is registered in the name of groups or organizations. These are used to inform the public about the group during commercial activities. When a group of individuals protects a service or goods collectively, this mark is used. Any association or any public institution or a Section 8 Company can be a mark holder. A common example of a collective mark in India is the Chartered Accountant designation. For example, Reliance Communications, Tata Sons, etc.
This mark is a sign which shows the origin of the product, quality, material or any other specific details of the product issued by the proprietor. The main use of this mark is to standard and worth of the product. Certification marks are commonly seen on packed foods, toys, and electronics. For Example, ISI, ISO, etc.
Online Trademark Registration
So, the trademark is a brand or logo which helps people to differentiate between your products than that of others. A registered trademark is an intangible property of a business that is used to protect the company’s investment in the brand or symbol. This unique identity can be a slogan, photograph or logo, it can be anything.
In India, trademarks can be registered online by the Controller General of Patents, Designs, and Trademarks. The trademarks are registered under the regulations of the Trademark Act, 1999. The registration also gives the right to sue anyone who tries to copy your trademark. The validity of the trademark is 10 years from the date of registration and can be re-registered after expiration. With all the technical advancements, trademark registrations can be easily done online with the help of a registered trademark attorney.
E-Filing of a Trademark Application
E-Filing of a trademark application is a simple process. The applicant has to login first on the website portal. New users have to register while old users can log in through their username and password or their digital signature. On successful login, the username and its user code will be displayed. Both international, as well as domestic trademarks, can be filed through this website portal.
Trademark Registration From
Online New User Registration
Application for Registration of Trademark
Documents required for Trademark Registration
Through the process of trademark registration, various documents are needed. They are:
- Applicant details: Name, address, and nationality
- Business type and its objectives
- A copy of the brand/logo/slogan name
- Identity and business proofs
- Signed Form 48 by the applicant
- Class of trademark must be filed under the application
- In the case of a company or LLP, the incorporation certificate is needed
Trademark Fees in India
Trademark fees are different for offline submission and online filing.
On What Payable
Application for Registration
How to Register Trademarks
The registration process of a trademark in India is by ‘first come first serve’ basis. Therefore, it is important for every person to apply for registration as soon as possible. Generally, a trademark usually takes around 2-3 years to get registered unless it is not opposed by any third party.
Steps to register a trademark in India are:
The first step in the process of registration is the trademark search. The search is necessary to check for similar trademarks on the intellectual property website. In case any similar trademark is found, go through its description to check about the product or service it represents.
Select a Trademark Agent in India
In India, only the proprietors are allowed to file a trademark application. If any proprietor is not present, the right holder must file the application through an agent or attorney. Usually, the agent takes care of all the responsibilities like searching, filing, preparing, and prosecution of the trademark.
Determination of the Eligibility and Availability of the Trademark
Initially, the agent starts the process by checking the eligibility for registration of the trademark and a complete search to check for any similar trademark present in the office of the controller general.
Completing the Application Form and Filing
The right holder can give his power of attorney to the agent to complete the process and file an application on his behalf. The form requires every bit of detail such as name, address of the proprietor, a brief description of services and goods linked with the trademark, whether any similar mark is present and a copy of the trademark.
Review by the Trademark Office
After the completion of the form, the trademark office reviews the application to check for errors and then gives the application number. If the trademark is approved, the application number becomes the registration number.
Preliminary Approval and Publication, show cause hearing or rejection of the Application
The application further goes to the association for examining the application is barred from registration on any grounds described under the Trademarks Act, 1999. Later, an examination report is prepared by the association through which the registrar of the trademark association decides the future of the application, whether accepted, rejected, or put up for ‘show cause’. In the case of show cause, the application can be accepted, rejected and accepted with some restrictions.
The registration certificate can be issued within three months if not opposed by any third party.
Trademark Registration Process Flowchart
Conditions for Registering a Trademark in India
There are certain conditions or requirements to be fulfilled before filing a trademark application in India. They are:
- The name, nationality, and address of the applicant are necessary. If there is any sort of partnership, details of every partner must be submitted with mentioning any minor, if present.
- Details of the goods and services linked with the registration must be submitted.
- A soft copy of the trademark came for registration.
- Translation of all the non-English words is required.
- Date of the initial use of the trademark.
- If the application submitted is to claim authority for an earlier-filed application, details of that application are also required.
Who can apply for a Trademark?
- Any person who shows the authority on the trademark can apply for the registration of its mark for goods as well as services.
- Any person whose business lies under the jurisdiction of India can apply for registration of a trademark.
- In case, the principal place of business is outside India, the lawyer associated with the proprietor present in India can file an application in the trademark office.
- In the case of a company, anyone can apply the application but it should be in the company’s benefit.
Checklist for Trademark Registration
- The selected trademark must be able to represent in the paper form or graphically.
- The trademark must be different in every way, which means it must be able to differentiate its goods and services from others.
- It should be used to create a connection between the people and the goods or services the person is offering. It means trademarks are used to promote the business.
Benefits of Trademarks
There are many benefits to registering a trademark.
- Trademarks differentiate your goods and services to that of your competitors which means that trademarks help consumers to identify you.
- Trademarks help to increase the goodwill and brand awareness of the product or services.
- Trademarks help in avoiding confusion in the market as a source of products and services.
- Trademarks help in creating the brand value in the market to give an upper hand against the competitors.
- Trademarks provide credit to the source of the goods or the service and it also guarantees its quality.
- It helps in the proper advertisement of the product.
- Trademark provides legal protection as the person who registered the trademark becomes the legal owner and he can take some legal against the person who uses your registered trademark without your permission.
- Trademark helps in establishing a unique identity of the company which means no other company can use your trademark for similar goods or services.
Different Trademark Symbols
This symbol denotes the brand name when your trademark is not registered and the application status is pending. This shows his authority over the brand and the claim depends on the result of trademark registration.
It helps in identifying the source of the service rather than a product. Which means TM is for product and SM is for a service.
This symbol denotes that the trademark is registered and shows that the Certificate of Registration is issued by the Registrar.
Trademark Application Allotment
When the application is received by the Trademark Registrar, a trademark application allotment is given by the registrar to the applicant. This number is given within one or two working days. This number helps the applicant to track the status of the trademark application. But mainly, the trademark application allotment number gives access to the applicant to attach the TM or SM symbol to the logo.
The Vienna Agreement was concluded in 1973 and was amended in 1985. Vienna Codification is a classification for trademarks that contains figurative elements. It helps in easing trademark searches and removing substantial reclassification work during the exchange of documents at an international level. The countries followed this agreement without making their own national classification.
The countries can apply this classification as their principal or as a subsidiary system, it’s up to the countries. In India, Vienna Codification is done by the registrar to conduct trademark searches for logos/artwork. So, when the Indian Trademark Website shows “Send to Vienna Codification” it means the trademark includes figurative element such as logon and figurative elements come under the Vienna Codification approved by the Indian Trademarks Registry. The Vienna Code is only assigned to figurative elements which mean as soon as any new trademark is filed, the Vienna Code looks after the trademark in search of any figurative elements.
Trademark Journal Publication
A Trademark Journal Publication is published by the Head Office of the Trademark Registry every Monday. It plays an important role in the registration of the trademark. A trademark is published in a journal when it gets a positive report in the examination from the trademark examiner. So, when a trademark application is accepted by the Trademark Association, completely or with restrictions, the trademark application is allowed to be published in the journal.
Promotion of the trademark in the journal doesn’t approve the registration of the trademark rather it helps the public to raise a trademark opposition. There are some requirements the journal wants before publication. The requirements are:
- Details of the trademark
- Date of application
- Priority Claim (If any)
- Details of the applicant and his address
- Agent’s details
- Class and specification of goods and services
- A statement as to use of the trademark
- Appropriate office
Information under Journals
Trademark Journals contain much information about trademarks. Such as:
- Recent public notifications and public notices issued by the office for trademarks.
- All the trademark applications which are accepted or allowed to be published before acceptance.
- Re-advertisement of the applications which are ordered by the officers.
- List of trademarks that are registered, removed, renewed, or withdrawn by the office.]
- Other information which is necessary to be published from time to time.