A trademark is any name, symbol, image, signature, etc. that provides a unique identity to the product or service and distinguishes it from the other similar products or services in the market. Under the Indian laws and regulations, it is a protectable asset. It builds a brand image of the business in the minds of the public, particularly consumers, and hence, is quintessential in procuring its business and goodwill.
Now, investing your capital, intellect, and labor to establish a certain brand name only to be used by others is not a fair state of the business, hence to safeguard your trademark from being copied by others, it is recommended to be registered with the Office of Controller General of Patents Designs and Trademarks.
Trademark registration is a four-fold process,
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Trademark search
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Filing of Application
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Examination of the claim & approval
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Registration and renewal (every 10 years)
“The process of a trademark search is the first step to protect your own intellectual property rights while avoiding a breach of somebody else’s rights. To avoid any kind of ambiguity and also receive a legal opinion as to the risks involved, one should reach out to seek professional help,” says Advocate Divya Dubey.
In the current blog, we shall be dealing with the first step, i.e. Trademark search.
Table of Content:
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Why conduct a Trademark Search?
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Trademark Database
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Trademark Search Procedure
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Understanding Search Results
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Trademark Class
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Frequently Asked Questions
Why conduct a Trademark Search?
Thinking of having a unique brand name is quite common but often it has been trademarked by someone else already and you may breach someone else’s intellectual property rights. The safest way to avoid the litigation of such a breach is to conduct a trademark search. It not only provides the detail of any similar and existing brand name & logo but also provides a list of prohibited trademarks. One of the imminent features of a good trademark is its distinctive nature as was held in the case of Imperial Tobacco Co. of India v Registrar of TradeMarks, AIR 1977 Cal 413: 81 CWN 885.
Trademark Database
In India, a database of trademark registrations and the registered trademark is controlled by the Controller General of Patent Designs and Trademarks and can be accessed through “Intellectual Property India” or “IP INDIA”. This database contains all the trademark applications which are submitted to the Trademark Registry and includes registered, objected to, opposed, expired and abandoned trademarks. The said database can be accessed by either a professional or a non-professional person.
Trademark Search Procedure
Trademark Search can be done through the official website of the Intellectual Property India. The said search is divided into three categories.
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Wordmark: For a similar representation of wordmark;
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Vienna Code: For similar artistic representation; and
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Phonetic: For phonetically similar words.
1. Wordmark Search
STEP 1: Visit the official website of the Intellectual Property India at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.
STEP 2: Under the dropdown menu in the ‘Search Type’, select ‘Wordmark’.
STEP 3: Affix an appropriate prefix within three available option viz,
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‘start with’ which displays all the search results of the database that start with the value provided for search,
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‘contains’ which displays all the search results of the database that contains the value provided for search
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‘match with’ which displays all the search results that exactly match the value provided for search.
STEP 4: Enter the applicable ‘class’ (explained later in this blog).
STEP 5: Click on search.
2. Vienna Code Search:
STEP 1: Visit the official website of the Intellectual Property India at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
STEP 2: Under the dropdown menu in the ‘Search Type’, select the ‘Vienna Code’.
STEP 3: Enter the six-digit Vienna Code.
India, being the member of the Vienna convention follows the international classification of the figurative elements in a trademark and the said code can be accessed from the website of WIPO (World Intellectual Property Organization).
STEP 4: Enter the applicable ‘class’ (explained later in this blog).
STEP 5: Click on search.
3. Phonetic Search:
STEP 1: Visit the official website of the Intellectual Property India at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.
STEP 2: Under the dropdown menu in the ‘Search Type’, select ‘Phonetic’.
STEP 3: Affix an appropriate prefix within three available option viz,
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‘start with’ which displays all the search results of the database that start with the value provided for search,
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‘contains’ which displays all the search results of the database that contains the value provided for search
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‘match with’ which displays all the search results that exactly match the value provided for search.
STEP 4: Enter the applicable ‘class’ (explained later in this blog).
STEP 5: Click on search.
Understanding Search Results
a. Wordmark Search – We have searched the trademark results for the wordmark “Ranbaxy” with parameters set as “starts with” and Class 5 (class 5 pertains to pharmaceuticals).
Search Result: The search result shows the total number of matching reports starting with “Ranbaxy” as well as the status of the application. One can access the information pertaining to the trademark application number, application date, owner information, trademark validity date, a trademark used since the date and description by selecting the “Show Details” option against each result.
b. Phonetic Search – We have searched the trademark results for the phonetic “Damo” under the Class 24 (class 24 pertains to Textiles and textile goods, not included in other classes; bed and table covers.).
Search Result: The search result shows the total number of 54 matching marks. One can access the information pertaining to the trademark application number, application date, owner information, trademark validity date, a trademark used since the date and description by selecting the “Show Details” option against each result.
c. Vienna Code Search - The Vienna code classifies every element of the universe (known space) into a broad 29 categories, where everything from the representation of the planets to the Animals has been meticulously classified, cataloged and categorized.
Trademark Class
The Fourth schedule to Trademark Rules, 2002 classifies goods and services into 37 categories and is an arrangement according to the type and the description of the services and goods. An estimated total of Eighty Thousand products (80,000 products) has been covered in the classes of goods and services. Each trademark class represents a distinct type of goods and services. Identifying the trademark class is important because the registration will protect the said mark only in the class that was filled in the application. If the nature of business involves multiple goods or services then the trademark can be filed in more than one class. The said classification is for –
The Fourth schedule to Trademark Rules, 2002 classifies goods and services into 37 categories. The said classification is for,
a. Classes for goods – Class 1 – 34
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Class
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Description
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Class 1
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Chemicals that are used in the industry, photography, forestry, unprocessed artificial resins, Tanning, and adhesive substances, etc.
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Class 2
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Paintings, coals & pigmentation, lacquers, mordents, printing, and art, etc.
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Class 3
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Cleaning products, cosmetics, bleach and abrasives, laundry products, essential oils, etc.
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Class 4
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Fuels, industrial oil, greases, illuminates, wetting and binding compositions, fuels, wicks, etc
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Class 5
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Pharmaceuticals, veterinary products, dietetic, dental wax, disinfectants, herbicides, fungicides, etc.
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Class 6
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Metal castings, hardware, locks and safes, common metal and their alloys, building material (metal), other metals are not included in any other class, etc.
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Class 7
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Machine and machine parts (except for land vehicles), incubators for eggs, etc.
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Class 8
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Implements and hand tools, cutlery and razors, etc
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Class 9
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Cash registers, calculating machines and data processing equipment, teaching apparatus, magnetic data carriers, etc
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Class 10
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Surgical, medical and dental apparatus, artificial limbs, eyes teeth, etc.
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Class 11
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Apparatus for heating, lighting, steam generating, cooking, refrigerating, drying, etc.
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Class 12
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Apparatus for locomotion by land, water, and air.
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Class 13
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Ammunition, firearms, explosives, fireworks, etc.
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Class 14
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Precious metal and their alloys, products in precious metals, jewelry, etc.
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Class 15
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Musical instruments etc.
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Class 16
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Cardboard, paper, and goods made from these materials, print matter, bookbinding, paintbrushes, playing cards, printing blocks, etc.
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Class 17
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Rubber, gum, asbestos, mica, and goods made from these materials and not included in other classes.
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Class 18
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Leather and imitations of leather, and articles which are made from these items and not included in other classes, animal skins, and hides, etc.
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Class 19
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Non–metallic rigid pipes for buildings, asphalt, pitch, and bitumen, etc.
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Class 20
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Picture frames, mirrors, Furniture of wood, cork, reed, cane and not included in any other category.
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Class 21
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Household and kitchen utensils, brush making material, articles for cleaning purposes, etc
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Class 22
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Nets, ropes, strings, sails, sacks and bags, and fibrous textile materials, etc.
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Class 23
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Yams and threads for textile use.
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Class 24
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Textile and textile goods which are not included in the other classes.
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Class 25
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Clothing, footwear, and headgear.
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Class 26 and 27
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Non-textile carpet, rugs, wall hangings, linoleum, and other materials which are used for covering floors.
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Class 28
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Game and playthings, and other sporting items that are not covered under any other class. Christmas decorations.
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Class 29
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Poultry items, jams, eggs, and edible oils.
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Class 30
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Coffee, tea, sugar, cocoa, rice, tapioca, spices, etc.
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Class 31
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Horticulture, agriculture and forestry grains which are not included in any other class. Fresh fruits and vegetables, seeds, malt, etc.
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Class 32
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Aerated drinks, beer, non-alcoholic drinks (including juices and fruits drinks) and other things that are used for preparing beverages.
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Class 33
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All alcoholic beverages (excluding beer)
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Class 34
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matches, smoker’s articles, tobacco
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b. Classes for services – Class 35 – 45
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Classes
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Description
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Class 35
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Advertising and Business In this class, services that help the management in managing the affairs, the organization (commercial organization) are included. Any advertising activity in which an announcement is made to the general public at large or concerns any type of goods and services are included.
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Class 36
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Insurance and Financial In this class, activities relating to insurance, finance sector or the monetary sector are included.
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class 37
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Construction and Repair In this class, the work is done by contractors, subcontractors, in the making or repairing work of buildings, or any restoration of work to its original state is included.
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Class 38
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Communication In this class, services that help in communicating anything between people are covered, whether oral or visual.
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Class 39
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Transportation and storage In this class, any service related to the storage of goods in a warehouse or any other place or transporting them from one place to another is included. The transportation can be via land, air or water.
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Class 40
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Material treatment In this class, any service which involves changing a chemical or the mechanical composition of a substance is included. Or any other service not included in any other class on the same lines.
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Class 41
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Education and Entertainment In this class, any service which improves the knowledge or mental capacity of a person or animal is included. It also includes services that entertain people or animals.
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Class 42
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Any scientific and technological services or research or any development of any computer hardware or software or any legal services. It particularly includes the services provided by an engineer (designing, making blueprints, etc) or any research for medical services. But it does not include any services under business research covered under class 35, or any service under the class 36, 37, 44.
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Class 43
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Temporary Accommodations: Any service provided by a person or establishment which includes the preparation of food or drinks for consumption services, or providing a bed for stay is covered under this class. It includes the services for reservation or a place of stay provided for animals. It specifically does not include any service covered under the classes 36, 39, 40, 41 and 44.
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Class 44
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Medical Services This class covers the services related to hygiene, medical services, first aid, beauty parlor services to human beings or animals. It also includes the services which are related to the field of horticulture or agriculture but does not include the services which are already covered under classes 37, 39, 40, 41,42,43. It particularly includes the services of breeding of animals, services relating to plant growth, medical advice, services relating to artificial insemination.
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Class 45
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Any personal or social service is covered under this class. It includes surveillance of people for the protection of their interests, safety and well being. It includes social projects like matrimony services, funeral services, etc. It does not include any services which are already covered under the classes 35, 36, 39, 41, 42, 44 or any car rental services.
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Frequently Asked Questions:
What is a preliminary Trademark Search? Why is a preliminary trademark search advisable?
Preliminary Trademark Search is also termed as a knock-out search. It is a quick search through an online database of Intellectual Property India to determine if the identical trademarks are already registered for any products or services. A preliminary trademark search is advisable because it eliminates the possibility of
What is Comprehensive Trademark Search?
The trademark search performed by the specialized attorneys is known as a Comprehensive Trademark Search. It has a wider scope than that of a preliminary trademark search and also, the legal risks you may face while registering your trademark are discussed by the attorneys.
How to select a trademark?
There are several broad as well as streamlined guidelines available to help one design or choose a unique and distinct trademark. The most relevant of all features of a trademark is its distinctive nature. Apart from that, one can always hire specialized professionals to help avoid any hard spots with respect to litigation involved with the breach.
When should you file a trademark?
Trademark registration is not mandatory in India. However, it is advisable to file a trademark as soon as one reaches a concrete ground, i.e obtains a unique trademark after a comprehensive search, in order to protect his intellectual property as well as the brand name.
“Although trademark registration isn’t compulsory in India, it is advisable to register as soon as one reaches a concrete ground in that respect. The process is not only extremely simple but also cheap. The gains are more if seen for longer terms,” says Advocate Divya Dubey.
How long is a trademark valid for?
The registration of a trademark is valid for a period of 10 years. It can be renewed every 10 years, perpetually.
How to file trademark renewal requests in India?
In India, the renewal request is to be filed in the FORM TM-R within one year before the expiry of the last registration of a trademark.
What is the renewal fee of the trademark in India?
The renewal fee for the physical filling of the trademark is 10,000 while for e-Filing, it is 9,000. If the renewal fee is not paid until the expiration of the last registration, the surcharge has to be paid along with the prescribed fee accompanied to form TM-R. If renewal fee along with surcharge is not paid till the expiry of six months after the expiration of the last registration, the trademark is liable to be removed. Once removed, restoration of the trademark can be requested in form TM-R along with prescribed fees and applicable renewal fees.
Is there an annual fee for trademarks?
Under the Trademark Rules, 2017, the application fee for new trademark registration or collective mark or certification mark or series of the trademark for the specification of goods or services of one class has been increased to Rs. 9000 for E-filing and Rs.10,000 for physical filing. A reduced fee of Rs. 4,500 for E-filing and Rs.5,000 for physical filing applies to individuals, startups and small enterprises.
What makes a trademark valid?
There are several criteria necessary to be fulfilled in order to make a trademark valid. According to the definition of a ‘trademark’, a mark can be registered if it is capable of being represented graphically and distinguishes the goods or services of one party from the other. This can include the shape of goods, their packaging, and color or combination of colors.
What is the need to perform a Trademark Search?
The Trademark Search is required to ensure that the mark you want to register for product or services is legally available
Is it mandatory to hire an attorney for Trademark Search?
Although it is not mandatory to hire an attorney for a trademark search, the same is highly advisable to avoid infringement of another’s property rights.
How long does a trademark search take?
A preliminary search usually requires a little over 1 hour whereas the one has been done professionally, i.e, a comprehensive trademark search requires 5-6 hours since it includes giving out of legal opinion as to risks involved.
Do I need to know a trademark class to perform a Trademark Search?
Yes, you need to know a trademark class to perform a Trademark Search.
What is the Nice Classification?
NICE classification is an international classification of goods and services for the purpose of trademark registration. There are 34 classes of goods and 11 classes of services.
Can an individual own a trademark?
Yes, an individual can own a Trademark.
Can you use TM without registering a trademark?
The symbol “TM” can be used when a person has already applied for the trademark but has still not gotten the registration.
How do I check if a name is trademarked?
A trademarked name can be searched by following the method of wordmark search as explained earlier in the blog.
How do I trademark a name for free?
You cannot trademark a name for free.
What to do if my trademark is already filed?
If the mark is already filed by another company or has a registered trademark, then the other party has the priority of the mark provided the trademark is for the common business product.
