In this article, Karn Singh of JGLS discusses the procedure for Trademark Registration in India.

A great trademark is Appropriate, Dynamic, Distinctive, memorable and Unique- Primo Angelia

Introduction

Registration of a trademark is very important for a company or if you’re starting a new business or trade. The company’s logo, name or signature is the first thing that should be unique from the rest. It should be protected from the others. Registering a trademark is a legal process that is provided under the Trade Marks Act,1999. A Trademark is a symbol that makes the mark legally valid. Hence, registering your mark under the trademark act is very important for a company, so that the mark can be secured from the rest of the competition of that business.

Registration of trademark for your business is very easy. Anything like a symbol, mark, signature, etc which is important for a business should be registered, so that others cannot misuse the company assets.

In India, the court has decided the infringement of trademarks according to the evidence given by the parties. In 1980s Bata v Bata, the shoe maker wanted to stop a company marketing foam materials under the same name. The judge asked, “ How would the customers know that Bata is not producing foam?” For this, the judge reasoned that customers won’t ask the seller who the manufacturer is. For this, Bata won the case despite the fact the class was totally different.

Cadbury owns 3 trademarks containing the word eclairs. And also own the purple color wrapper which no-one can use for chocolates. However, all three names were not in use because of which ITC won the case.

For registering a trademark, one has to understand and take precautions before registering it as it can lead to the court hearing.

For that step by step procedure is explained below:

Documents required

• A soft copy of the logo in JPEG format is required for the registration.
• A Form of Authorisation TM 48. Link for the form is attached http://www.ipindia.nic.in/writereaddata/images/pdf/form-TM-48.pdf .
• Date of first use of a mark.
• Name and address of the proprietor of the mark or Name of all the partners if its a partnership firm.
• Fees that is required for registration.

Types Of Trademark available

• Names According to Section 9 or 11 of Trade Marks Act it should not be similar to with an earlier trademark.^[1]
• Symbols
• The Combination of Colours or even a single color in combination with a word or device according to Section 10.^[2]
• Letters, numerals or combination of both.
• Monograms
• Sounds Mark

In the registration of the trademark, it should contain the following

• The class/classes of the goods/services in respect of which it is to be registered.
• Name and address of the proprietor
• Proprietor Trade Description
• Agent/Attorney Detail
• Trade Mark text which is to be registered.
• Place where trademark has been registered

How to make a trademark application?

The first process before registering for the trademark is to search for the trademark. Entrepreneur or owner of the company should conduct an online search of the trademark on trademark database.

For this, you just have to visit the Intellectual property website. Link for the same is provided http://www.ipindia.nic.in/.  After visiting the web page, the public search option is given on the right side of the page. Which would provide you the option of selecting different search like patents, trademarks, design, electronic registerar of patent agents. Select Trademarks under the public search. This will open a form which has to be filled. Link for the form is https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.

• In that form, you have to select word mark as the search type at the top of the page.
• After that enter the Wordmark that you would like to search. The trademark database can be selected through 3 options that are  – “start with”, “contains” and “match with”.
• After that enter the class of trademark that is applicable to the product. You can access the NICE Classification for selecting the class.
• Click search to begin the trademark search.

The result of the trademark search

 

The above picture shows the result of a company names Levis under class 25. Levis Strauss & Co. is the owner of the clothing and do own this mark internationally. You can select the option of show details which would display information about the company like date of expiry, registered or not, etc. However, if the result shows no matches, then there is no registered company in that name. It is very important to know the result before registering for the trademark. After the search is done, you are ready to register the mark. For registering the trademark follow the step below:

You can make an application for a trademark on Form TM-A. TM-A form is attached in the link http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf.

Application for registration of a trademark /collective Marks / Certification Mark / Series of the trademark for specification of goods or services included in one or more than one classes. Where the applicant is an Individual / Start-up /Small Enterprise, the prescribed fees for physical filing is Rs. 5000 and for E-filing it is Rs. 4500. TM-A form with prescribed form fees should be made at one of the five offices of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai, and Ahmadabad.

Pre-filing search is important before filing the application. Once registration is done, an official receipt with a TM number will be issued. Then an examination report is generated to which a reply has to be submitted through e-filing or through email at [email protected] within one month from the date of receipt of the examination report. A response to the registration is given by an affidavit, a hearing or by an interview.

The Application will be looked at only if it does not conflict with existing registration or pending trademarks. As the objections raised by the registrar are removed, then the application is then published in the Indian Trade Marks Journal, with endorsements stating that it has been accepted or that it is being published before acceptance. Once it is published, any person can file a notice of opposition to registration within 3 months.

Acceptance or refusal of the trademark will be considered once the opposition proceedings have been completed.

Journal Publication

When the trademark application is accepted by the trademark registrar, the registered trademark is published in the Trademark Journal. All the trademarks that have been registered and accepted are published in the journal according to the class. within 90 days, anyone can oppose the trademark if the trademark is damaging their mark. They have the opportunity to object the trademark within 90 days of publishing. If there is no objection raised within 90 days of the publication, then the mark will be registered within 12 weeks time.

When the trademark is opposed by the 3rd party who’s mark has been damaged then a hearing will be called and both the parties have to appear before the court. The objection can be removed by evidence. Based on the decision of the court, the mark will be decided if rejected or accepted.

Duration of Trademark

• Trademark can be registered for the duration of 10 years. It can be renewed for a further period of 10 years on payment of the renewal fees. The trademark can be renewed by filling the form TM-R with transaction costs.

Costs for trademark transactions

• To file a new application (Form TM-A): For physical filing Rs-5000 & For E-filing Rs-4500
• To file a notice of opposition to oppose an application published in the Trade Marks Journal a (Form TM-O): For physical filing Rs 3000 & For E-filing Rs 2700
• For Renewal of a registered trademark (Form TM-R): For physical filing Rs-10,000 & For E-filing Rs-9000
• Surcharge for late renewal (Form –TM-R): For physical filing Rs- 5,000 Plus renewal fee & For E-filing Rs- 4,500 Plus renewal fee.
• Restoration of removed mark (Form TM-R): For physical filing Rs- 10000 Plus renewal fee & For E-filing Rs- 9000 Plus renewal fee.

Ways to register the trademark

Registration of a trademark can be done by two ways offline or online. Offline registration of the trademark can be done at one of the offices of the trademark register based on the jurisdiction. While online registration is called E-filing of a trademark. E-filing of a trademark application is a new service provided by the trademark office. Link for the same is attached http://www.ipindia.nic.in/e-gateways.htm#comprehensive-e-filing.

For registration of a trademark, go to the link and complete an electronic application form. Then providing the associated attachments and pay the necessary fees.

E-filing is beneficial and more useful than offline registration as it provides trademark application number immediately. It also provides online verification to assure error-free filing and obtain your filing date. It also speeds up the process. All the details can be saved in your PC and can see online history or track status of the applications filed by clicking “Status of filed application”.

Contact

Trade Marks Registry, Mumbai (head office)

Intellectual Property India,
Boudhik Sampada Bhavan, Antop Hill, S.M. Road, Mumbai-400037 Tel: + 022-24132735

(Jurisdiction: Maharashtra, Madhya Pradesh, and Goa)

Shri. O P Gupta, controller general of patents, designs and trademarks, Bhoudhik Sampada Bhavan, Near Antop Hill Head Post Office, S M Road, Antop Hill, Mumbai-400037,

Phone: 022-24132735, Fax:  022-24123322

Website: www.ipindia.nic.in

 

^[1] Section 9 and 11 of Trade Marks Act, 1999

^[2] Section 10, The Trade Marks Act,1999