Trademark in India

Published on 28 Jul 2016 by Team

A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a  word signature, name, device, label, numerals or  combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

Selecting a good trademark

If the Trademark is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Avoid selection of a geographical name, common personal name or surname. No one can have a monopoly right on it. Also avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.) It is advisable to conduct a market survey to ascertain if the same/similar mark is used in the market.

Who can apply for a trademark and how

Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in a prescribed manner for registration.The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark.The application should be in English or Hindi.It should be filed at the appropriate office.The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post.These can also be filed online through the e-filing gateway available at the official website.

Legal Requirements to Register a Trademark under the Act

  • The selected mark should be capable of being represented graphically (that is in the paper form).
  • It should be capable of distinguishing the goods or services of one undertaking from those of others.
  • It should be used or proposed to be used the mark 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 and some person have the right to use the mark with or without an identity of that person.

What are different types of trademarks that may be registered in India?

TRADEMARK - A trademark, is a distinctive name, word, phrase, logo, symbol, design, image, or a combination of these elements or indicator used by an individual, business organization or other legal entity to be identified by its targeted consumers that the products or services on or with which the trademark appears to originate from a unique source, designated for a specific market, and to distinguish its products or services from those of other entities.

WORDMARK - A trademark where the trademark owner is claiming rights only in the word, letters or numbers themselves, without claiming any right in the manner how these words are presented is known as a wordmark. For Example “Corporate Professionals”, ‘AMUL’, MOTHER DAIRY

SERVICE MARK - A service mark is a word, phrase, symbol or design, or a combination thereof that identifies and distinguishes the source of a service rather than goods. For Example “Corporate Professionals” will be a service mark for Legal and Financial Services it provides.

CERTIFICATION MARK - A Certification Mark is a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor so as to differential with respect to. For example WOOLMARK, ISI etc. fall into the category of Certification Marks. These marks can be used only in accordance with defined standards.

COLLECTIVE MARK - A collective trademark is a mark that distinguished the goods or services of the members of an association of persons. Such association of persons is the proprietor of the mark in such a case. For example, ‘CA’ used by ‘The Institute Of Chartered Accountants of India’, ‘CS’ used by ‘The Institute of Companies Secretaries Of India'.

SOUND TRADEMARKS- A sound can be a distinctive indicator and can also be protected. A sound trademark, therefore, is a sound or melody with a distinctive recognition effect. In order to able to protect it, the sound must be reproducible graphically, for example, using notes. A well-known sound trademark is the jingle of the ICICI bank.

3-DIMENSION MARK IN INDIA- In India definition of mark includes the shape of goods and therefore three dimensional or 3-Dimensional or 3D Marks can be registered under the provisions of Indian Trademark Act, 1999.

Trademark Registration Process

Upon the filing of the application, the registry will issue you with an official receipt with the filing date and number allotted to the application.  The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted.

The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used. If the following examination, the trademark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue. 

Trademark Registration is a tedious process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately and the priority starts from the date of application. Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.

Requirements for filing a trademark application

  1. The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also, mention whether any minor is a partner.
  2. If the applicant is a company, the country or state of incorporation.
  3. A list of goods and/or services for which registration is required.
  4. Soft copy of the trademark to be registered.
  5. If the mark contains or consists of non-English words, a translation of those words into English is required.
  6. If the application is to claim priority from an earlier filed convention application, details of that application are also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.
  7. Date of first use of the trademark in India, if at all used
  8. Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.

Trademark co-existence

Trademark coexistence describes a situation in which two different enterprises use a similar or identical trademark to market a product or service without necessarily interfering with each other’s businesses.It frequently happens that two traders find themselves using the same or a similar trademark with respect to the same or similar goods in different parts of the world. They may remain genuinely unaware of each other’s existence for years until one of them expands the business and starts using the trademark or files a trademark application in the country in which the other operates.What happens then?

At that point, a trademark office may refuse the application on the grounds that it conflicts with the earlier rights acquired by the other trader. The latter may also object to the application in the course of opposition proceedings, or bring an invalidation action after the mark has been registered.It should be stressed that prevention is better – and cheaper than cure. One of the most basic precautions when selecting and registering a new trademark is to undertake as comprehensive a search as possible, using professionals skilled at the task. A thorough trademark search should minimize the risk of a business coming face to face with a similar mark once on the market.

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