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This article is written by Sakshi Gupta, here she discusses the process of Trademark registration. 

Introduction

Trademarks in India are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India.

Validity – Registration valid for 10 Yrs—To be renewed thereafter

  • TM (Trademark) – Unregistered Trademark which can be used to promote products once the application is filed.
  • SM (service mark) – unregistered service mark which may be used to promote or advertise products.
  • ® (Registered Trademark) – used when registration certificate is granted.
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What is a Trademark?

According to the act, “trademark” means a

  • mark capable of being represented graphically (i.e. pictures, words or both) and
  • capable of distinguishing the goods or services of one person from those of others and
  • may include the shape of goods, their packaging, and the combination of colors.

TM is a “brand” or “logo” – which may distinguish the product from those of the competitors.

Is TM Registration Compulsory?

Registration of a trademark is not compulsory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration.

What are the benefits of a Registered TM?

  • Legal Protection- Only owners of registered trademarks are allowed to take action or sue for damages in case of trademark infringement.
  • Unique Identity- No other competitor can apply or use your trademark for similar goods or services.
  • Valuable Asset- Being an intellectual property, a registered TM can be sold, franchised or commercially contracted.
  • Reliability- Registered trademarks can be used to create a sense of trust, goodwill, and quality in the minds of your customer as well as investors and partners.

These are a few of the many benefits.

What can be Trademarked?

Name, Word, Letter/Numeral, Devices, Combination of colors, Shape of Goods, Slogans, Images- Monograms/ 3-D Shapes or signs or letters, Signature, Sound, Smell- represented as chemical formula along with sample

*Only when they are capable of being reproduced graphically and are distinctive.

What TM is not Registrable?

  • TM identical or deceptively similar to an existing registered trademark or trademark for which application for registration has been made
  • TM causing deception or confusion or is offensive
  • Geographical names, common names, common trade words, and common abbreviation

Who can Apply for Registration?

Any person or business claiming to be owner can apply for a trademark including Individual, Company, Proprietor, Society, Foreign proprietors can also apply for registration of the trademark in India.

What are the requirements for registration?

  • Digital Signature- Class II/III – Ist & Basic Requirement

  • Information Required

  1. Name of the Trademark/Servicemark to be registered
  2. Name, Address, Nationality of the Applicant
  3. Nature of the Business of the Applicant (whether Proprietorship, Partnership, Company, Society, etc.
  4. Name, Address, Nationality of Proprietor/Partner of the Applicant Firm
  5. Date of the Ist use of the TM/SM in India or proposed to be used
  6. List of Goods/Services & Classes according to the NICE Classification
  7. Translation/Transliteration of the Non-English/Hindi word or Non-Roman/Devnagri Character appearing on the mark
  8. Meaning of the mark, if any foreign language other than English/Hindi used
  9. Details of convention priority, if any Ist filed country (Priority Claim)- Filing No. & Date
  10. Mobile No. & Email for correspondence 
  • Documents Required

  1. Identity Proof of the Applicant – Passport, Drivers license, Aadhar card, Voters id or Ration card
  2. Business Proof – Partnership Deed or Incorporation Certificate or Registration certificate- In case of a legal entity or registered body
  3. Logo – Label of the proposed trademark must be provided in standard label size i.e. 8cm x 8cm.

If the trademark application is made for a word, the logo is not required. In all other cases, the logo must be submitted preferably in black and white format.

  1. Power of Attorney – The Power of Attorney/Authorization in Form-48 signed by the applicant if the application has been filed through a TM Agent/Attorney.
  2. Affidavit – If a claim for previous use of the TM is made on the trademark application, then an affidavit must be submitted by the applicant.
  3. Certified Copy of the Priority Application – if priority is being claimed from an application filed in any of the country that is a member of the Paris Convention.

 What is the Online Registration Process?

  1. Trademark Search – Check availability of TM to be registered at Public Search Website. This is to avoid the possibility of another similar or identical trade-mark that might have been registered.
  2. SELECT APPROPRIATE CLASS – government specifies the 45 categories of classes – for goods 1 to 34 classes and for services, 35 to 45 classes are specified. Class selection depends on the nature of goods/services.
  3. FILING APPLICATION – At IPI India Website, Trademark Agent/Attorney/Proprietor fills the required details along with supporting documents in Form TM A with applicable fees.

Acknowledgment is issued immediately and the applicant can use the TM.

  1. EXAMINATION – Once the application is filed, Trade Marks Registry will then examine the mark to ensure it meets the requirements for registration in India.  Examination report is generally issued within 3 months to 1 year.
  2. REPLY TO THE EXAMINATION REPORT – The reply to the examination report within the one month from the receipt of the examination report. If accepted, the Trademark proceeds for publication in the Trademark Journal.
  3. ADVERTISEMENT IN TM JOURNAL – It is published in the Trademark Journal for a period of 90 days so as to invite the public for filing opposition for the mark.
  4. OPPOSITION – The third-party can oppose the registration of the Trademark within the 3 months (90 days) from the date of the Trademark journal made available to the public. If no opposition is received within such time then the name proceeds to acceptance.
  5. REGISTRATION CERTIFICATE – If no opposition takes place, the TM registration certificate is issued.

Registration Fees

In case of Individual/StartUp/Small Enterprise – Application in Form TM-A

  • E-filing – Rs.4500/-
  • Physical Filing – Rs.5000/-

In all other cases – E-filing – Rs.9000/-; Physical Filing – Rs.10,000/-

Renewal – Form TM-R

  • E-filing – Rs.9000/-
  • Physical Filing – Rs.10,000/-

 

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