Trademark is a type of intellectual property and to protect the brand name and logo from unwanted use or duplicate usage, obtaining a trademark through trademark registration is a must. In this article, we will talk about types of trademark and how to register a trademark in India. We will also talk about the importance of registration of the Trademarks as without registering the trademark, you cannot enforce your rights against other individuals and associations.
Indian trademark law statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off. Statutory protection of a trademark is administered by the Controller General of Patents, Designs, and Trademarks, a government agency that reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.
Table of Content:
- What is a Trademark?
- What can be registered as a trademark?
- Who may apply for Trademark?
- How much does it cost to get a trademark in India?
- Benefits of Trade Mark Registration
- Process of Filing a Trademark
- Documents Required for Trademark Registration
- Important Points Concerning the Trademark Registration Process
- Trademark symbols and their usages
- What is Nice Collection?
- Avoiding the Trademark Application Rejection/ Trademarks Objects
- Opposition of a Trademark
- The Validity of a Registered Trademark
- Trademark Renewal Process and Forms
- Madrid Protocol
What is a Trademark?
Trademark means any specific sign which is capable of being represented in a graphical way and is henceforth capable of creating a distinction between the goods and services provided by one undertaking and the goods and services provided by some other undertaking. The term “Trademark” can be understood as a visual symbol which can either be a word or name or might be numbers, label, color combinations, etc. which are used by any business to establish their goods distinctly from the existing ones in the market.
Before discussing the concept of Trademark, let us first understand what a Trademark is. In general terms, a trademark can be a word, logo, symbol, label, shape, smell and combination of colors, etc. and acts as a source indicator and refers to the origin of goods or services. According to Section 2(1)(zb), “trademark” means a mark which is:
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Capable of being represented graphically; and
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Capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors, and;
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in relation to Chapter XII (other than section 107), a registered trademark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as the proprietor to use the mark; and
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in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of the permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification trademark or collective mark.
What can be registered as a trademark?
As per the trademark rules of India, the following items can be trademarked:
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Word Mark: The brand name/word, used by the applicant for the respective goods and services, provided the word does not describe the character or the number of such goods/services.
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Device Mark: Device marks are in general referred to the marks like logo, pictures of drawings, a combination of pictures and words or drawings, etc.
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Color Mark: The particular color or combination of colors is recognized as a trademark if it is established that the color(s) function as a unique identifying mark to identify the origin of goods or services. In recent times there is a growing trend of adopting colors or a combination of them as a trademark in the marketplace.
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Shape of Goods Mark: The shape of a product or the shape of a container may serve a function of identifying the origin of goods. The shape of a container may also be another form of intellectual property as design. A perfect example to understand this is the Coca-Cola Bottle.
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Sound Mark: Sound marks are a non-conventional trademark and are possible to be registered in India, provided the sound functions as an identifier for the origin of goods or services. Some of the registered sound marks in India are Yahoo - (Human voice yodeling Yahoo), National Stock Exchange – (Theme song), ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik), Britannia Industries (Four note bell sound), etc.
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Three-Dimensional Mark: Three-dimensional symbols can be registered as a trademark in India based on strict standards on the inherent distinctiveness of trademarks and its capability to distinctly identify the origin of goods and services. The three-dimensional trademarks (3D trademarks) are usually presented as the physical appearance of the product or substantial packaging in three-dimensional images.
Who may apply for Trademark?
A trademark application can be easily made by private firms, individuals, companies, LLPs, or NGOs. However, in the case of NGOs, LLP’s or companies, the trademark is supposed to be applied for registration in the name of the business which is concerned.
How much does it cost to get a trademark in India?
An approximate basic fee for the filing of a trademark in India under Form TM-A for:
(a) Individual Startup/Small Enterprise:
- E-filing – 4,500/-
- Physical filing – 5,000/-
(b) In all other cases:
- E-filing – 9,000/-
- Physical filling – 10,000/-
(Note: Fee is for each class and for each mark)
Benefits of Trade Mark Registration
There are numerous benefits of getting the Trademark registered; namely:
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Separate Identity: As the customers shall be identifying any singular product or service only by the way of its brand name. Registration of such a trademark ensures that the competitors will not be applying it and it can remain as the company’s separate & unique asset.
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Marketing Opportunity: Any product or service which is being sold under any particular trademark which is registered will be helping in developing up the trust, quality, safety, along with the goodwill of the company.
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Legal Protection: Any owner of a registered trademark has the vested legal right if any infringement takes place.
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Global Filing of Trademark: A trademark which is registered and filed in India is permitted to be filed in other foreign countries as well through MADRID PROTOCOL.
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Creation of Intangible Asset: Registering any particular trademark further develops an intangible asset that can either be traded or franchised or can be commercially contracted.
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Exclusive Vested Rights: Any proprietor of the registered trademark shall be able to enjoy the exclusive rights which have been vested over the registered trademark.
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Registered Symbol: The company can also use the registered symbol (®) after the trademark has been successfully filed.
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Differentiating Products: Trademarking the product further assists the consumers to get to know about the products more quickly which can help them to differentiate amongst a variety of products.
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Commercial Goodwill Protection: Any owner of a registered trademark has an additional power towards building, securing and protecting the commercial goodwill of the goods or services that are being provided.
Process of Filing a Trademark
The process of filing a trademark consists of the following 3 steps:
STEP 1: Trademark Class Selection: The first and foremost thing to determine while filing for a trademark is to assign a particular class/classes to the trademark. For filing an application with the Indian Trade Marks Office, the goods and/or services need to be categorized according to the class they fall under.
STEP 2: Trademark Clearance Search: The second step towards filing a trademark is a trademark clearance search in the Trademark Registry. An in-depth and detailed check is conducted on the trademark logo along with the brand name which has been selected for the trademark to make sure that it has not been yet registered in the name of anyone else. Once it is found to be unique, it is permitted to be registered. If the logo or brand name is already registered it is further modified in order to prevent any trademark infringement.
STEP 3: Application Drafting: Once it is ensured that the brand name or logo which is selected is unique and is permitted to be registered, the preparation is done by way of collecting documents. The application form is filled and the whole prescribed procedure and payments take place to complete the registration process.
Documents Required for Trademark Registration
In order to apply for trademark registration, certain documents are required.
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The TM-A is supposed to include the name, type, address of the applicant, the proposed trademark, class, description of goods or services according to the selected class along with the address of the agent who has the power of attorney and the time of use of such trademark.
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The application is prescribed to be in English or Hindi and is supposed to be registered at the appropriate office.
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A trademark can be filed for a mark/logo which is proposed to be used or already in use. If the mark/and logo are proposed to be used, the date shall be mentioned in the application form in DD/MM/YYYY format.
In case the use of the mark is claimed to be prior to the date of application, the applicant shall file an Affidavit (User Affidavit) testifying to such use along with the supporting documents and the affidavit shall be attested by a notary public.
Important Points Concerning the Trademark Registration Process
With the advent of the advancement of technology, the process of trademark registration can now easily take place online as well. Any registered Trademark attorney can be approached to file the online application which may save the efforts of visiting the registry office.
- The Vienna Codification Process: During the trademark process, Vienna codification is a vital step. It is a form of international classification which is provided once the application form has been filled. However, at that particular point, the application for registration shall be denoted as Sent for the Vienna codification.
- The Examination & Objection of Trademark: The trademark would be examined as to its ability to be registered under the various sections of the Trade Marks Act, 1999. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued. An examination report is usually issued within a period of one month to one year depending on the backlog of the registry.
- If an examination report has been issued raising objections, a reply has to be filed by the applicant with a period of one month from the date on which the examination report was received by the applicant, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.
- Hearing before the Trademark Register/Officer: If any particular trademark application has been rejected, the applicant has the right to go for a hearing. If the authorized officer is convinced with the documents that are provided, then the application which is presented shall be passed. However, If the authorized officer is not convinced, the application shall be rejected again. If the applicant is not fully convinced regarding the reason provided for rejection, then the applicant may approach the Intellectual Property Appellate Board.
Trademark symbols and their usages
® Symbol: The R symbol is given once the trademark application for registration is filed. This particular symbol provides protection to the trademark from getting copied by any other competitor.
™ Symbol: This particular symbol is provided for unregistered trademarks. It acts as a warning for others from copying the logo, name or symbol. However, it does not provide copyright protection, and any other individual can make use of such a logo or name in case the application has been rejected.
© Symbol: The C symbol denotes the specific contents which do not have any sort of copyright issues. This symbol is prescribed as mandatory by many nations for the purpose of copyright claims.
SM Symbol: This symbol is used by the service industry. This symbol has been applicable for classes from thirty-five to forty-five. However, it cannot be considered as guaranteed protection against the issues relating to copyright.
What is Nice Collection?
The Nice Classification is a system of the international classification of goods/services born out of the “Nice Agreement”, to be used for the application of trademarks. There are 1-45 classes in the Nice Classification out of which, classes from 1-34 categorize Goods and classes 35 – 45 classify services.
Each class specifies a broad heading called ‘Class Header’ which gives a clear idea as to the type of goods/services which fall under them and the detailed list of names of goods/services. Classification also gives an ‘explanatory note’ which very clearly elucidates about the type of goods/services which would fall under the particular class. The explanatory note always doubts as to the applicable class for a particular goods/service and that way very helpful to determine the class.
Avoiding the Trademark Application Rejection/ Trademarks Objects
If any Trademark has been registered but the status of the same is being shown as “Objected”, then this particular status is an indication that the registrar has received either one or more than one objections regarding that particular trademark. Such an objection either is due to the duplication of a trademark that already exists and is registered or if any such trademark is supposed to be considered offensive. However, there are numerous other reasons which may lead to trademark objection. The objections can also be raised as per Section 9 and Section 11 of the Act.
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As per Section 9 of the Act the objections can be made if any authority determines the trademark specifically to be descriptive of the goods. However, in order to overcome any such type of objection, proper evidence is required to be given in order to prove the distinctiveness of the applicant’s Trademark.
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As provided under Section 11 of the Act the objections are raised by the concerned authority in case they discover a similar trademark which implies that such a trademark already exists for similar goods, services or products. When the objection has been raised, the applying candidate is required to make sure that the appropriate documents shall be within the limited time frame which is provided. The same is asked for, as it shall eventually help the candidate to overcome the objection which has been raised.
Opposition of a Trademark
When the trademark application is advertised/published in the Trade Marks Journal, 3 months’ time is given for any third party to oppose the registration of the trademark, which may be extended by one more month. If no oppositions are filed during the 4 month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.
But if the application is opposed, the status on the Trademark E-Register will reflect as "OPPOSED". This happens when a third party files an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. In order to contest the opposition, a counter-statement should be filed within 2 months from the date of receipt of notice of opposition, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement.
The Validity of a Registered Trademark
Once any trademark application has been successfully registered either in the Trademark Office or through the online process, the candidate is permitted to apply for the Registered Symbol, ® over the trademark which he owns. All such trademarks which are registered are valid for a limited time frame of 10 years from the date on which they have been registered. After every 10 years, the trademarks can be renewed by paying a requisite fee.
The Certificate of Registration will be issued by the Registrar under sub-section (2) of Section 23 on FORM RG-2 and shall include the trademark. The form shall bear the seal of the Trade Marks Registry. (Rule 56 of Trade Marks Rules, 2017)
Trademark Renewal Process and Forms
The mere process of registering the trademark would not be sufficient in the long run as the trademark which has been registered remains valid for a time span of 10 years from the date of registration. Once this time frame gets exhausted, the candidate shall file for the Trademark Renewal. Such registration is prescribed to be renewed within a period of six months prior to the date of expiry of such registration, which is, ten years from the date on which the application was made or subsequent renewals that had taken place. The renewal application form is mandatory to fill and must be filed before the prescribed deadline in order to attain the seamless protection of the registered trademark without leaving any chances of litigation against the same.
The application of renewal is made as per form TM-12. Any failure in renewing the trademark within the stipulated time frame shall lead to a grace period of 1 year, after which an automatic removal of the trademark takes place from the Trademarks Register.
Madrid Protocol
The Madrid Protocol is a treaty, signed by India in 2013, that provides for international registration of trademarks by filing a single application with one set of the fee. The regulatory body of the Madrid Protocol is the International Bureau of World Intellectual Property Organization (IB of WIPO). An application for registration of a trademark under the Madrid Protocol can be filled through the Indian Trademark Office of the respective jurisdiction. The application can be filed under 3 languages, i.e., English, French, and Spanish.
This application can be filled through FORM MM2 for a prescribed fee with the respective Trade Marks Office of the applicant’s jurisdiction.
References:
[1] Forms - http://www.wipo.int/madrid/en/forms/,
[2] Fee - http://www.wipo.int/madrid/en/how_to/file/fees.html
