A trademark is a visual symbol which may be a word, name, device, label or numeral used by a business to distinguish its goods or services from other similar products or services in the market owned by other businesses. A trademark is an asset that can be protected under the Indian law. To protect a trademark from being copied by others, the inventor of the word or symbol must apply for trademark registration. The process for trademark registration has various steps, and it is essential to hire an expert for trademark filing to ensure a seamless process.
A trademark application can be filed by any person or legal entity in India. The mark does not necessarily have to be used before applying for registration although a prior used mark improves the chances of registration. Foreign nationals and foreign entities can also file trademark applications in India and secure registration without additional requirements.
ALSO READ: REASONS TO OBTAIN TRADEMARK REGISTRATION
Registering a trademark provides legal protection against misuse of any kind including infringement or copy of a company’s name or logo, which is often a company’s most valuable asset.
It grants the trademark owner exclusive nationwide ownership of the mark which can be legally upheld in the courts of law in any part of the country.
Registering a trademark grants the trademark owner the right to make the mark exclusive and incontestable and use it in a variety of mediums.
This will be immensely useful to prove the validity of the mark and the registrants ownership incase of any infringement by a third party.
Products/ services are identified by their logo which helps create brand value over time. A strong brand is a huge pull for new customers and an anchor for existing customers.
Registering a trademark early and using it will create goodwill and generate more business for the brand owner.
A registered trademark is an intangible asset for a company as it helps generate more business and helps attract and retain customers by account of brand recognition.
It also grants the business legal right to use a logo exclusively for 10 years with the choice to re-register.
To do a trademark search in India, visit the trademark search database using a web browser.
Trademark filing is a simple, online process which can be completed within 24 hours. IndiaFilings has helped file over fifty thousand trademark applications in India and has obtained registration for various leading brands.
There are a certain set of documents that need to be signed, scanned and sent to us. The list is given below.
Trademark search will help gauge the availability of a mark and to find if any other similar or identical mark exists. The client can proceed depending on the availability of the mark.
The World Intellectual Property Office (WIPO) has organised all goods & services under 45 classes. The first 35 classes denote products and the rest services.
Businesses can start using the ™ symbol alongside their brand as soon as the trademark registration application is filed. This symbol is NOT indicative of registration.
The ® mark can be used once the trademark application is approved & registration is complete. The entire process usually takes eight to ten months.
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all inclusive fees
Trademark filing under one class for proprietorship and small enterprises. Inclusive of government fee and taxes.
all inclusive fees
Trademark filing under one class for proprietorship and small enterprises. Logo designing by Graphic Designers. Inclusive of government fee and taxes.
all inclusive fees
Trademark filing under one class for large enterprises not eligible of MSME registration. Inclusive of government fee and taxes.
The following forms must be provided for renewal of a Trademark along with the allotted fee.
|Form No.||Purpose||Cost (physical filing)||Cost (e- filing)|
|TM-R||Application form for renewal of a registered trademark to be used by the registered proprietor||Rs.10,000||Rs.9000|
|Application for renewal with a surcharge of registration of a Trademark||Rs.5000 + Renewal fee||Rs.4500 + Renewal fee|
|TM-18||Affidavit in support of the statement of the case||-||-|
Trademark infringement occurs when a trademark used by a person is similar or identical to that of a registered trademark rights of another person or company in the jurisdiction.
The most common standards for testing trademark infringement are: (a) close similarity of a mark and its associated goods and/or services to a prior registered trademark and its associated goods and/or services; and/or (b) use of a mark that creates a likelihood of confusion with a prior registered trademark among the relevant consumers.
A person is considered to be applying a trademark wrongfully if:
For the above offences, a person is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.
The process of trademark begins with a trademark search. We can help you conduct a trademark search using the tool below to find marks across classes. The government trademark search tool can also be used to find identical or similar trademarks under the same class. Once the search is complete, you will proceed with the trademark application based on the details of identical or similar trademark applications already filed with the government.
Once the trademark registration application is filed with the trademark registrar, a trademark application allotment number is provided within one or two working days. The application can then be tracked online through the online trademark search facility. On obtaining the allotment number, the owner of the trademark can affix the TM symbol next to the logo.
The Vienna codification established by the Vienna agreement (1973) is an international classification of the figurative elements of marks. Once the application is filed, the trademark registrar will apply the Vienna classification to the trademark based on the figurative elements of marks. While this work is in progress, the trademark application status usually reflects as "sent for Vienna codification".
Once the Vienna codification is complete, the trademark registration application will be allotted to an officer in the trademark registrar office. The trademark officer would then review the trademark application for correctness and issue a trademark examination report. The officer will either accept the application and allow for journal publication or object the same.
If the trademark registration application is objected by the Trademark Officer, the trademark applicant has the right to appear before the officer and address the objections. If the officer is satisfied with the justifications of the trademark applicant, the trademark would be allowed for trademark journal publication. In case the officer is not satisfied with the justifications, the trademark applicant has the right to appeal the decision of the Trademark officer before the Intellectual Property Appellate Board.
Once the trademark registration application is accepted by the registrar, the proposed mark is published in the trademark journal. The trademark journal is published weekly and contains all the trademarks that have been accepted by the registrar. Once it is published, the public have an opportunity to object to a particular registration, if they believe their business will be damaged by that registration. If there are no objections filed within 90 days of that publication, the mark will typically be registered within 12 weeks’ time.
If the trademark registration application is opposed by a third-party, a hearing will be called for by the trademark hearing officer. Both the applicant and the opposing party have the chance to appear at the hearing and provide justifications for registration or rejection of the trademark application. Based on the hearings and the evidence presented, the hearing officer will determine if the application should be accepted or rejected. The decision of the hearing officer can also be challenged by escalating it to the Intellectual Property Appellate Board.
If there are no objections or oppositions to the application, the trademark manuscript and trademark registration certificate will be prepared. Once the trademark registration certificate is issued, the mark is considered to be a registered trademark of the owner, granting the owner exclusive use of the mark. The symbol can now be placed next to the logo.
In cases wherein the Trade Mark Registrar raises an objection for registration of a trademark, the applicant has an opportunity to submit a written reply for the objection raised within 30 days.
The following are the top reasons for trademark objection:
In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner.
Corrective Action: The applicant can overcome this objection by requesting to correct trademark application by filing a request on form TM -16.
The trademark applicant name must be entered properly in an application, as suggested in this article. In case of incorrect trademark applicant name.
Corrective Action: The applicant can overcome an objection for incorrect trademark applicant name by requesting to correct trademark application by filing a request on form TM -16.
Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the applicant, Trademark Form TM-48 must be attached. In case of Form TM-48 is not attached or incorrectly executed.
Corrective Action: The applicant can overcome an objection for failure or incorrect Form TM-48 filing by requesting to correct trademark application by filing a request on form TM -16.
In case a trademark application has not mentioned the principal place of business of the applicant, or if the applicant’s address for service in India is not mentioned.
Corrective Action: The applicant can overcome an objection for incorrect address by requesting to correct trademark application by filing a request on form TM -16.
In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class.
Corrective Action: The applicant can overcome an objection on the specification of goods or services by requesting to correct trademark application by filing a request on form TM -16.
In case, same or similar earlier trademarks of different trademark owner are found on records in respect of the same or similar description of goods or services.
Corrective Action: The applicant can submit a reply to the trademark examination report by stating that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark, along with supporting evidence.
Trademarks which are not capable of distinguishing the goods/services of one person from those of another person are devoid of distinctive character and thus liable for objection under absolute grounds for refusal of trademarks.
To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.
An objection can be raised by the Trademark Examiner, if the mark has the potential for the deception of the public by reason of something inherent in the mark itself or in its use, like nature, quality or geographical origin of the goods or services.
An objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.
There is a provision for alteration or change in trademark under the requirements of Section 59 complemented by rule 98. In the event of change in name of the proprietor or address on the trademark label, permission is given for alterations or amendments. One can add the word limited to a company’s name.
There are no extreme consequences if the counter-statement has not been filed or there is a delay by registered proprietor and the registrar will allow or deny such a counter-statement appeal after the hearing of the proprietor and the changed trade mark will be published in the Trade Marks Journal.
In case a trademark application is made in an improper form, then an objection as following could be raised by the trademark Examiner:
“The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”
Any such objection can be responded by filing trademark Form-16, requesting a correction. However, such process does take time and effort leading to longer trademark registration processing time. Hence, it is best to take help from a Trademark Attorney through IndiaFilings, prior to filing any trademark registration application forms.
IndiaFilings offers a comprehensive suite of solution for protection of your trademark in India. Prior to application of the mark and post-application of the trademark, IndiaFilings can help you with consultation on protecting your mark. However, please note that the ultimate authority for registration of a mark rests only with the Trademark Registrar and IndiaFilings or its Employees can at no-stage guarantee registration of a trademark.
Prior to applying for a trademark, we can help you do a trademark search. Under the Trade Marks Act, identical or similar trademarks cannot be registered. It is easy to determine identical trademark from a trademark search. However, the test for similarity is applied by a Trademark Examiner on a case to case basis. Hence, IndiaFilings or its employees cannot predict which trademark applications will be objected.
In case a trademark application is objected by the Trademark Examiner, a reply can be submitted to the objection raised by the applicant with facts and points supporting registration of the mark. Based on the reply, the Examiner can call for hearing or allow the trademark filing to proceed or reject the trademark application
Prior to a trademark application being registered, the Trademark Registrar would publish the mark to be registered in the Trademark Journal and allow a period of 90 days for any person to raise an opposition. IndiaFilings can help you manage trademark oppositions or file an application opposing registration of any other mark published in the Trademark Journal.
Any mark which is identical or similar to an existing registered trademark or any trademark for which an application has been made, cannot be registered. Also, marks that would likely cause deception or confusion or are offensive in any way may not be registered. Geographical names, common names, common trade words and common abbreviation can also not be registered as a trademark.
To standardise the goods or services which the trademark will represent, the trademark registry has a list of 45 Classes under which all types of goods and services are represented. The trademark application must mention the type of goods or services the trademark will represent under one or more of the classes. Trademark registration is granted for that specific class of goods or service.
No, any trademark registered in India will be valid only in India. However, some countries use the trademark filing in India as a basis for registering the trademark in their country.
Yes, a foreign person or a foreign entity can apply for trademark registration in India.
Trademark application can be filed with the trademark registry in a matter of 1 - 3 days. However, it will typically take 6 to 24 months for the registry to complete their formalities and provide registration for the trademark.
The TM mark can be used along with the trademark once the trademark application is filed with the Controller General of Patents Designs and Trademarks.
The ® mark can be used once the trademark application is approved by the Controller General of Patents Designs and Trademarks and trademark registration is provided.
Registered trademarks are valid for 10 years from the date of filing. The owner of the mark can file for renewal to keep the trademark protection current prior to the end of its validity.
If the trademark examiner sends a hearing notice to the applicant and if there is no response to the hearing notice within 30 days of receipt, then the application is automatically refused. In such a case, a new application needs to be filed.
If the trademark examiner raises an objection to the application and if there is no response to the objection notice within 30 days of receipt, then the application is automatically refused. In such a case, a new application needs to be filed.