How to get a Trademark Registration in India

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What is a Trademark?

A Trademark is a name, symbol, figure, letter, word, logo, or a combination of these, in addition to smell as well as sound, adopted by a business, to identify and distinguish their goods and services from others, and to imply their source of origin as being from that business.

A trademark/logo is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.

A trade mark can be a letter, number, word, phrase, logo, picture, packaging or any combination of these. It must be capable of distinguishing goods and services of one trade from those of another.

For businesses operating in a competitive marketplace, it is important to protect your business assets as well as distinguish your brands. A registered trademark can give you that extra edge in the marketplace, protecting your brand and setting you apart from your competitors. A registered trademark is a valuable and tradeable property.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Under the Indian Trademark Act, which uses International Class of Goods and Services it is essential to file a trademark application for registration in proper classes using acceptable description of goods/services to obtain registration quickly.

Bhagnari & Co. shall not only file and prosecute applications for Trademark Registration in India, but shall also provide competent, quality services to form a proper strategy in maintaining an effective trademark portfolio.


Why should you get your Trademark Registered?

Trade-mark rights may be acquired for both registered and unregistered trade-marks. In particular, a trade-mark does not need to be registered to benefit from the protection and rights afforded under the Act and the common law. Notwithstanding the foregoing, a trade-mark registration provides several additional benefits over and above those attached to unregistered trade-marks, including providing:
(1) exclusivity to the trade-mark across all of India rather than to the geographical scope of a trade-mark’s reputation;
(2) the basis for filing a trade-mark in another Convention country;
(3) the basis for ground of opposition against a third party in opposition proceedings before the Trade-marks Office used to prevent a third-party trade-mark application from proceeding to registration;
(4) the basis for a trade-mark infringement action in India;
(5) the basis for alerting others of your rights in the context of trade-mark availability searches, as all trade-mark applications and registrations are entered on the Trade-mark Registry;
(6) the basis for determining rights in a licensing regime; and
(7) the basis for valuation of trade-marks.

The most salient distinction between registered and unregistered trade-marks is that more extensive rights are afforded to an owner of a registered trade-mark.

Although unregistered trademarks are also protectable, such marks are often highly suggestive and may be more difficult to protect than a traditional registered trade-mark.

Registering a trademark has its own advantages of gaining exclusive legal rights on your trademark and accords better protection of your mark. It is the first step of establishing your own brand.

Registering a trademark has its own advantages of gaining exclusive legal rights on your trademark and accords better protection of your mark. It is the first step of establishing your own brand.

Registering a distinctive trademark helps to distinguish your goods and services from others in the market. It also works as a deterrent to others who would want to pass-off their goods as yours.

Trademark registering is mostly on a first-come-first-serve basis. Hence, registering your trademark at the earliest is always considered prudent so that no one can register your trademark and claim use besides you.

The entire process of filing till registration takes two years to complete. After filing the trademark application, there are usually office actions and one need to response to the office actions. Once the Trademark Office is satisfied with the responses, it will publish the application in the Journal. Anyone can oppose the registration within three months of the publication. If opposed, the Trademark Registrar asks each party to present his case and allows denies registration accordingly. To make sure there are not many delays in the trademark procedure, care should be taken to chose a trademark which is unique, so that chances of opposition also becomes less.

From filing trademark application, preparing responses to office actions, filing opposition, responding to an opposition, attending opposition hearings whenever required to its final registration, Intepat’s team of highly experienced trademark agents and attorneys understand the nuances underlying such registration and are adept at handling trademark registration.

We provide cost effective and efficient online trademark registration services in India. Also, we collaborate with our international partners to help our clients register their mark internationally.


Requirements for filing a trademark application in India:

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 is 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.


How to get your Trademark Registration in India?

The process of getting your trademark registered begins by filing your application. After filing of the application, the registry will issue us 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, following examination, the trade mark 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.


What are the advantages of obtaining trademark registration in India?

Trademark Registration in India provides:
∙Prima-facie evidence of ownership of the trademark.
∙Important asset for your business or company and contributes to the goodwill generated.
∙Gives you stronger enforceable rights to prevent others from using the trademark in connection with the goods or services for which it is registered.
∙Trademarks can be sold, licensed or assigned.
∙ Registration usually covers the whole of India.


What kinds of trademarks can be registered in India?

The possibilities are almost limitless. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted “ISO 9000” quality standards are an example of such widely-recognized certifications.


How is a trademark registered in India?

First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.
Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.


Can you get an International Trademark Registration?

Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential and key market. A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are very high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.

1. Registering a trademark abroad gives the applicant an exclusive right to commercialize its products in those markets.
2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.
3. Registering a trademark internationally also provides an opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.
Thus, the benefits of international registration and protection of one’s trademark clearly outweigh the costs of such registration.


International Application under Madrid Protocol

The Madrid system for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several countries and territories. India has joined the Madrid protocol with effect from 8th July 2013.

At present, there are 91 countries which are members of the Madrid protocol as can be seen here:
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India for the same mark in exactly the same classes.

In a single international application under the Madrid protocol, several member countries may be chosen and designated for the protection of that mark. The filing fees will depend based on the number of classes for the mark as well as the countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour:
http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition to filing fees, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.
Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of international application.

If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in the respective country.

Advantages of filing an International Application under Madrid protocol are:
1. Lower costs and fees payable as compared to individual foreign filings,
2. Managing renewals, change in address, change in ownership is easier and more cost-effective
3. Additional countries may be designated at a later stage.


What does a trademark do?

A trademark provides protection to the owner of the mark by ensuring an exclusive right to use the mark to identify his goods or services, and/or to authorize another entity to use that mark in return of consideration. The period of protection usually last for ten years, but a trademark can be renewed indefinitely beyond the time limit on payment of renewal fees. Trademark protection is enforced by the Courts, which has the authority to prevent trademark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive marks to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.


What kind of protection does a Trademark Registration in India offer?

Trademark protection means that the trademarked goods/services cannot be commercially made, used, distributed or sold without the trademark owner’s consent. These trademark rights are usually enforced in a court, which, in most systems, holds the authority to stop trademark infringement. Conversely, a court can also declare a trademark invalid upon a successful challenge by a third party. A trademark owner has the right to decide who may – or may not – use the trademark. The trademark owner may give permission to, or license, other parties to use the trademark on mutually agreed terms. The owner may also sell the right  to someone else, who will then become the new owner of the trademark.


What kinds of trademarks can be registered in India?

The possibilities are almost limitless. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted “ISO 9000” quality standards are an example of such widely-recognized certifications.


How to get a trademark registration in India?

First, an application for trademark registration in India must be filed with Indian trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.
Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.


How extensive is trademark protection?

Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks which contains full application information on all registrations and renewals, facilitating examination, search, and potential opposition by third parties. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned.

In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. A person who has a link (through nationality, domicile or establishment) with a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country, obtain an international registration having effect in some or all of the other countries of the Madrid Union. At present, more than 60 countries are party to one or both of the agreements.


Why should I go for trademark registration of my company name/trade name?

Registrations of Company Names, Business Names or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations. In order to protect the brand name, trademark registration is strongly advised.


The status of my trademark application is “Formalities Chk Fail”. What does it mean?

It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website is shown as Formalities Chk Fail. This could happen in instances such as non-filing of POA, non-filing of translation/transliteration when the trademark is not in English/Hindi, filing in wrong class, etc. The reason for the Formalities objection should be ascertained and appropriate action should be taken for the application to move forward for registration.


The status of my trademark application is “Formalities Chk Pass”. What does it mean?

It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website shows as Formalities Chk Pass. The Trade Mark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (when filed through an agent) and whether appropriate translation/transliteration has been filed when the trademark is not in English/Hindi. When such basic requirements are not met, the status could be reflected as “Formalities Chk Fail”.


The status of my trademark application is “Marked for Exam”. What does it mean?

The status shows as “Marked for Exam” when the trademark application has been assigned to an Examiner. The trademark would be examined as to its registrability under the various Sections of the Trade Marks Act. 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.


The status of my trademark application is “Exam Report Issued” / “Accepted”. What does it mean?

The status “Exam Report Issued” or “Accepted” is used by the Trade Mark Registry to indicate that the trademark application has been ordered for publication in the Trade Marks Journal prior to registration. This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.


The status of my trademark application is “Objected”. What does it mean?

The status is shown to be as “Objected” when the Examiner raises some objections regarding the registrability of the trademark. The examination report citing the objections can be viewed in the Trade Mark Registry website. In order to overcome the objections, a written response needs to be filed with the Trade Mark Registry within one month from the date of receipt of examination report, 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.


The status of my trademark application is “Advertised before acc” or “Advertised” or “Accepted & Advertised”. What does it mean?

The status is shown to be as “Advertised before acc” or “Advertised” or “Accepted & Advertised” when the trademark application is advertised/published in the Trade Marks Journal. This is one of the final stages in the trademark registration process. Once the trademark is published in the Trade Marks Journal, 4 months time is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4 month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.


The status of my trademark application is “Opposed”. What does it mean?

The status is reflected as “Opposed” when a third party has filed 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 status of my trademark application is “Send Back to EDP”. What does it mean?

When there are errors regarding data entry of applications which needs to be rectified, the application is sent to EDP Section and the status is shown as “Send Back to EDP”. This could also happen in cases where the documents are not digitized properly. The status would remain as “Send back to EDP” till these issued are rectified by the EDP Section.


Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.

You may directly call on +91.9860588440 or write mail to info@bhagnari.com for further information and discussions.