In simple words, trademarks are special unique signs that are used to identify goods or services from a certain company. They can be designs, pictures, signs or even expressions. It is important because it differentiates your products from the competitions. It can be associated with your brand or product. Trademarks are classified as intellectual property and therefore is protected from infringement. Trademarks and its rights are protected by the Trademark Act, 1999.
To get the protection of trademark rights one has to register the trademark. It is important to register your trademark because it prevents others from copying your mark and misrepresenting other products with your mark. Trademarks help the customers to recognise the brand and the brand value in one look such as the logo of a tick sign for Nike or a jumping wildcat for Puma etc.
Unlike patents, trademark does not have a definite limitation period. Where a patent expires in 20 years a trademark registration expires after 10 years of its registration, but unlike patents, a trademark can be renewed again for another 10 years. This process can be indefinitely done, meaning as long as you keep renewing the trademark it will not expire and will continue to be under the protection of the Act.
1. Trademarking a Brand Name
By trademarking your company’s name, you are protecting the brand, its reputation, and your ideas, all of which you undoubtedly invested a great deal of blood, sweat, and tear working on. And while the procedure for trademark registration itself will take time in all areas considered, nothing would be worse than not protecting your brand and potentially be faced with an infringement lawsuit from a larger company.
The process of brand trademark registration in India is now possible and convenient through the trademark registration portal (IP India Portal) and you can trademark any one of the below things or even a combination of the following:
– Letter
– Word
– Number
– Phrase
– Graphics
– Logo
– Sound Mark
– Smell or a mix of colors
2. Trademark Registry
The trademark registry was established in 1940 then came the Trademark Act which was passed in 1999. Currently, the trademark registry works as the operation or functional body of the Act. As a functioning body, the trademark registry implements all the rules and regulation of the trademark law in India.
The Head Office of the trademark registry is in Mumbai, and it has branch offices in Delhi, Ahmedabad, Chennai and Kolkata. A trademark is registered under the Trademark Act, 1999 and then entered into the Trademark Registry. In this process, the registry will check whether the registering mark meets all the conditions of the Act before registering it.
3. Who Can Apply For a Trademark?
The trademark owner can apply for trademark registration. In the Trademark Registration form, the person whose name is mentioned as the applicant will be declared as the owner of the trademark once the trademark is successfully registered. Any individual, a company and an LLP can be an applicant and may file the application for the registration of the particular trademark.
4. How to Register a Trademark?
Registration of a trademark is done by the Registrar Office of Trade Marks. When you plan on registering a trademark there are a few steps involved.
Choosing a trademark:
Remember to choose a unique and distinctive mark which will represent your company. The other important point is identifying which class you belong to. Currently, there are 45 classes of goods and services under which the trademark can be registered. Classes 1-34 are for goods and classes 35-45 are for service.
Mark search:
Once you have chosen your mark it is advisable to conduct a trademark search to check whether your chosen mark is similar to an already registered mark. You can either do this yourself by going to the online website of the Controller General of Patents, Designs and Trademarks. On the website, you can find an option to do a public search. Once you click on this option you need to choose your class and search the online database.
The other option is to get legal services, although you will have to pay for it is the safer option. Overall legal services will cost lesser in case your trademark is objected against. Not only will they do the search, they will also help you with the whole process.
Filing application:
You can file one application for multiple classes or series trademark, or collective trademark. For this, you have to fill in form TM-A. This form allows you to register the trademark beyond one class. Filing of this form has two separate cost brackets:
Rupees 9,000 or Rupees 10,000
If you are not a start-up, small enterprise or an individual you will fall under this bracket. You have to pay rupees 9,000 for e-filing of the from or Rupees 10,000 if you file the form in person with the Office of Trade Marks.
Rupees 4,500 or Rupees 5,000
If you are an individual, small enterprise or a start-up then you fall under this bracket. Rupees 4,500 is the charge for e-filing of the form or Rupees 5,000 if you file the form physically.
While filling the form make sure not to make any mistakes, this may lead to delays or even rejection of the application. You have to fill in all the details and also add a picture of the trademark with the dimensions of 9 by 5 cms. You may be required to attach five duplicates of the same. The full file must be then submitted with two duplicates when filing.
You can file it online or by yourself or by an agent, whichever is convenient for you. Confirmation of filing will be done immediately if done online, if done physically it may take up to 15-20 days. Cleartax experts will help you with filing a trademark application and ease the process for you. Click here to know more.
5. Online Trademark Registration Procedure
Step 1: Surf internet for a brand name that is “wacky-enough”
This is simply a short and best way for any newcomer to get a catchy, trendy, and an interesting brand name. Picking up a brand name that is wacky and quirky is definitely a wise move since most of the generic names would already be in someone’s hands. Moreover, zeroing in on a particular name requires a quick research process to ensure yourself that you are not picking a brand name that is already in use. The best part here is that you can invent or coin some words with a mix of generic words to create a unique brand name for yourself.
Step 2: Preparing a trademark application
The following supporting documents together with the application have to be submitted for online trademark registration:-
– Business Registration Proof: On the basis of your registered business (for eg: sole proprietorship and so on), an identity proof of the company’s directors and an address proof have to be submitted. In case of sole proprietorship business, ID proof of the proprietor viz. PAN card or Aadhaar card could be submitted. Whereas, in the case of companies, the address proof of the company needs to be submitted.
– Soft copy of the trademark.
– The proof of claim (which is applicable) of the proposed mark can be used in another country.
– Power of attorney to be signed by the applicant.
Step 3: Filing the application of brand name registration
Manual Filing and e-Filing are the two different ways for filing the trademark registration application (form TM-A). If you choose ‘manual filing’ then you have to personally move and handover your application for the registration to the Registrar Office of Trade Marks situated in the major cities of India like Delhi, Mumbai, Kolkata, Ahmedabad, and Chennai. After that, you have to wait for at least 15 -20 days to receive the receipt of the acknowledgment.
But in the case of an e-filing system, you will receive your receipt of acknowledgment instantly on the government website. Once after receiving your acknowledgment, you are eligible to use your TradeMark (TM) symbol beside your brand name!
Step 4: Examining the process of the brand name application
Once the application is dispatched, the Registrar of Trademark will check out whether you have followed certain terms and that your brand name complies with, the existing law. Moreover, there should not be any similarity or identical with any existing or pending brands for the registration. This is the reason why we preferred you to choose a quirky brand name!
Step 5: Publication of your brand in the Indian Trade Mark Journals
After the process of examination, the Registrar of Trademark will publish your brand name in the Indian trademark journal. This is certainly the most important part of the trademark registration and there should not be any opposition within 4 months from the date of publication. When there is no opposition, the Registrar of Trademark will proceed towards issuance of Trademark Registration Certificate.
Step 6: Trademark Opposition
If there is any opposition by a third party within 4 months of the trademark publication in the trademarks journal, the Registrar of Trademarks will give you a copy of the notice of the opposition. You need to reply to the opposition notice by filing a counter-statement within 2 months of the receipt of the opposition notice. If you do not submit the counter statement within 2 months, the trademark application will be considered to have been abandoned and rejected.
However, if there is no opposition within 4 months, this step will not apply to you, and your brand name is proceeding towards acceptance for the issuance of Trademark Registration Certificate.
Step 7: Hearing on Trademark Opposition
This step will not apply to you, if there is no trademark opposition.
However, if your trademark is opposed by a third party and you send your counter-statement within 2 months, the Registrar of Trademarks will send your copy of the counter-statement to the third party opposing trademark registration.
Evidence must be submitted by you and the third party in support of your case. The Registrar will give you and the third party an opportunity of hearing after submission of evidence. After hearing both the parties and considering the evidence, the Registrar will pass an order of acceptance or rejection of the trademark application. If the Registrar of Trademark accepts your trademark application, then he will process to issue registration.
Step 8: The trademark registration certificate issuance
The Registrar will accept your trademark application if there’s no opposition being raised within the stipulated period of 4 months or on acceptance of your trademark application after trademark opposition hearing. Wow! And this will be the happiest moment for you as the Registrar issues the Registration Certificate with the Trademark Registry seal.
Right from the moment you have been issued with your certificate, you can use the registered trademark symbol (®) beside your brand name.
6. Status of application
Once you have received the confirmation of the filing of the application you will get an allotment number. You can check the progress of the application online with this allotment number. This will take time, if there is no problem with the filing then you will get to know whether your application is approved or rejected in 18-24 months. If there is a problem then this may take longer.
Files are prioritised according to the filing date, therefore the longer it takes the more priority your application gets. The other perk about filing the application is that even if it hasn’t been approved you can use the TM symbol next to your mark, once you have received your allotment number.
7. Registration
Once your trademark is approved the registry will give you a Trademark Registration Certificate. This will officially confirm that your trademark has been registered and is now protected. The registration will be valid for 10 years from the date of the filing of the application. Trademark registration can be renewed after this period. Renewal can be done indefinitely.
Please Note: A registered trademark is only protected and valid in India and does not warrant any international status or protection.
8. Trademark Registration Fees
Trademark Registration Fees for Individuals – Rs.10,000*
Trademark Registration Fees for Companies – Rs.15,000*
* Prices shown above may vary. Please click here to contact our experts for complete pricing details.
9. Top 8 Things You Need to Know Regarding Trademark Registration
A trademark can be one of your company’s most valuable assets. It is a form of identification and contributes significantly towards building the company’s public image. A trademark is a visual symbol – a word, name, numbers, label, logo, a combination of colours etc. It is a mark of uniqueness and helps the customers identify a particular brand or company.
The Trademark Act, 1999, governs the laws related to trademarks and their registration.The trademarks in India are registered by the Controller General of Patents, Designs and Trademarks, (Office of the Registrar of Trademarks), Ministry of Industry and Commerce, Government of India.
Take a look at the top 8 things you need to know about trademark registration:
1. Visual Representation
The types of trademarks you can get registered are quite varied. Here are a few types:-
– Word Marks
– Service Marks
– Logos and Symbols
– Shape of Goods
– Series Marks
– Collective Trademarks
– Certification Mark
– Geographical Indicators
– Pattern Marks
– Sound Marks
– Colour Marks
– Three Dimensional Marks
2. Intangible Asset
Consider the fact that your business builds a reputed name and turns out a successful brand. A trademark, being a type of intellectual property, brings heaps of benefits to the company. Once a trademark is registered, it becomes an intangible asset that can be traded, franchised, commercially contracted and distributed.
3. Protection Against Infringement and Other Legal Protection
The owner of a registered trademark can exercise his legal rights in case there is any infringement with regard to the owner’s logo, brand, a slogan that has an active trademark against it. The owner has the right to sue any third party that uses the trademark without the prior permission of the owner of the trademark.
4. Trademark Search
A trademark search is usually carried out to check if a particular trademark already exists. The search can be conducted through the government’s Indian Trademark Registry database or a third-party service provider website.
5. Class Selection
The goods and services here are classified into 45 different sectors. Each sector is referred to as a class. Every logo or brand name is to be registered under the appropriate class at the time of application. Out of the 45 different classes, 34 of those classes comprise of product classes, and the remaining 11 are for service.
6. Voluntary, not Compulsory Registration
The registration of a trademark is done on a voluntary basis. However, if a trademark is registered, it holds concrete evidence that the ownership of the trademark belongs to the person who has taken the effort to register it. All legal decisions will be in favour of the party that had the trademark registered.
7. Validity
A registered trademark has a period of validity that stretches up to 10 years before it has to be renewed again. However, the renewal process may be initiated only within one year before the expiry of the registered trademark. If one fails to do so, the trademark will be removed. Even on removal, the trademark can be reinstated through what is known as restoration of the trademark in the prescribed form.
8. Trademark Symbols
Trade Mark (TM) and Service Mark (SM)
This symbolises that the trademark has not yet been registered, but an application for the same is pending. It is put up to warn third parties lest they infringe upon the same. There is no specific legal significance as such because the application has not yet been approved by the authorities.
R (®) Symbol
On the approval of the trademark application, you, as the proud owner of the newly registered trademark, are empowered to display the ® symbol next to the trademark. This symbolises that the trademark is officially registered, that infringement of any kind by a third party will be punishable by law.
It is not mandatory to display the ® symbol. However, it protects the owner of the trademark in a way that, should anyone rip-off the actual product, on suing the third party for infringement, he has a right to recover all the profits that were lost. This is because the court requires the owner to prove that the infringer was aware of the fact that the trademark was registered and yet went ahead to use it without any prior permission.
C (©) Symbol
The © symbol is generally used to signify copyright that the owner has over some creative work. This includes:
– Artwork- Photography
– Videography
– Literary Works
– Software
The © symbol is valid for a lifetime. The symbol is used with the copyright holder’s name and the year of the first publication in the country where the work was copyrighted. All in all, there is a lot that one must be aware of when it comes to trademarks and their registration. The process, in itself, is quite tricky, which is why the applicant must carry out proper research concerning the same. Therefore, registering your trademark has benefits aplenty provided it is done with due care.
10. Benefits of Trademark Registration in India
Trademark is a unique symbol or sign which may be a label or numeral or combination of colours for identification of your goods or services. You can obtain a trademark registration under the Trademarks Act, 1999.
Trademark enables you and a third party to distinguish your products and services from those belonging to your competitor. However, it would be helpful to keep in mind that geographical names, common names, common trade words and common abbreviation cannot be registered as a trademark.
Apart from being unique, a Trademark should be easy to use, make your products marketable and create brand recognition for your products. Trademark registration has several advantages and benefits to the owner:
Legal protection: Upon trademark registration, Trademarks are classified as intellectual property and are therefore protected from infringement. Trademark registration also confers an exclusive right to the use of the trademark in relation to the “Class” of goods or service it represents. Once you have filed the trademark application, the Symbol “TM” can be used with your products. The symbol “R” can be put into use only after you have obtained registration of your trademark. Further, you can use the ® symbol only for the goods and/or services listed in the registration certificate.In the case of unauthorised use of a registered trademark, you can seek relief for infringement in appropriate courts in the country.
Product differentiation: Trademark registrations are distinct to the goods or services they represent. Trademark will enable differentiation of your product as against the products of your competitors. Also, since trademark registration will be valid for the entire class of goods or services so represented, it will help in distinctly identifying your products. Customers uniquely identify products carrying different trademark, thus creating a customer base for your product.
Brand recognition: Customers associate a product’s performance, quality, features, and so on with the company making such products. They identify the product generally by the logo, which would be a registered trademark. Trademark registration facilitates brand recognition for your goods and services. It also creates goodwill associated with the brand. Thus, your brand is recognised as well as carries a market value over time. Brand recognition welcomes new customers while retaining loyal customers.
Creation of an asset: Trademark registration creates an asset for a business enterprise. Trademark is recognised as an intangible asset for accounting and income tax purposes. Trademarks are intellectual property and carry a value associated with the products they represent. Trademarks can be sold, franchised, assigned or commercially exploited in any other manner. You can recognise the value or cost associated with trademarks in the books of accounts, and also claim a deduction for depreciation and recognise income from the same.
Business valuation and goodwill: Trademarks registered and associated with your products enhance your overall business value, goodwill and net worth in the industry. Your trademark communicates your quality assurance, distinct features of your products and your organisation’s mission. Trademarks contribute to the growth of your business. They help retain loyal customers and protect the goodwill of your business.
Trademark recognition: Trademark registered in India is valid for 10 years from the date of filing of an application. However, the trademark can be further renewed. In a case where you want to use your trademark outside India or expand your business outside India, you need approval or trademark registration in the respective countries. In such cases, your trademark registration and business in India acts as a base to obtain registrations outside India.
Business expansion: A trademark establishes a connection between the customers and the products of an enterprise. With efficient or unique products, you can create a customer base. Your trademark helps you in retaining and expanding the customer base. Registration of your trademark confers exclusive rights of use for 10 years and protects your business revenues. Business enterprises can leverage the benefits of a customer base by introsducing new products and expanding their business.
11. Frequently Asked Questions
A few of them are listed out:-
- Common date of renewal for all the trademarks.
- Amendments to the marks will pass through the IB, hence records are maintained facilitating easier audits.
- Costs are comparatively lesser.
- Application The trademark must be registered or at least applied for with the Indian Trademark Office in order for it to be eligible for filing under the Madrid Protocol. The Indian Trademark Office will then certify that the details in the international application are the same as those in the basic application/registration. The date on which the international application was filed is also to be made note of and then the application is forwarded to the WIPO.
- WIPO Examination The WIPO, on receiving the application, then conducts a formal examination in order to verify the compliance of the application with the statutory requirements. On the observation of any irregularities found, the necessary changes for the same need to be done within three months. If it is not remedied within the stipulated time, the application stands “Abandoned”.
- WIPO Publication If all the steps until this point are correctly done, the application is recorded in the International Register and published in the WIPO Gazette of International Marks. A certificate of International Registration will be sent to the applicant by the WIPO. Further, the WIPO will notify all the other trademark offices of the fact that the applicant has chosen to extend the protection of that particular mark.
- Examination by the Trademark Office of the Designated Country The Trademark Office of the Designated Country further examines the application for verification with the applicable laws as per that particular country. Within 12-18 months, the acceptance or refusal of the application will be conveyed to the WIPO, who in turn will inform the applicant about the decision of the trademark office of the Designated Country.
- Advertisement and Registration The mark will then be advertised in the Indian Trademarks Journal where it shall be open to third party opposition for a period of 4 months. In the absence of any opposition after the period of 4 months, the protection for the trademark will be granted by the Indian Trademarks Registry.
