Trademark

Trademark can be a logo, slogan, brand, or simply the name of a product. A trademark helps a business undertaking to create a value for their products and services and exclusively identifies a product as belonging to a specific company and recognizes the company’s ownership of the brand.

How Does Online Trademark Registration Work?

Trademark Search

We conduct a thorough search of the TM directory
Step 1

Discussion on Class

Advice on the classes you need to apply under
Step 2

Regular Updates

You will receive updates until registration
Step 3

Benefits of registering a trademark:-

A trademark helps a business enterprise to create a value for their products and services and also helps it outstand among different competitors.

Types of trademark

Word Mark

A word mark (also known as a logotype) refers to a typographic treatment of the name of a company/institution, or a product mainly for identification of the brand. Once the registration is done for a word mark, the trademark holder has an exclusive right to use that word in any style or font. The major advantage of a word mark is that it prevents third parties from using the same word for their business operations. 

For example, Microsoft, FedEx, Google are all word trademarks, their owners can use it in any different styles, while nobody else can use the same word.

Device Mark

A device mark is a combination of images, words and designs altogether. In case one wishes to register a stylized logo with some word in it, it will be registered as a device mark. If one wants the word to get registered, it will be registered separately as a word mark and if the logo gets registered, it will be a device mark. Registering a device mark helps prevent third parties from using the same or deceptively similar device in their products or services. 

For example, McDonalds has been registered as a device mark.

Colour Mark

A mark can be registered as a colour mark when it is a single colour or a combination of colours. A colour mark is claimed when the distinctiveness lies in the combination of colours, and not in the device. It can only be registered when it is a new combination of colours and customers directly link the colour to the product, the product is distinctively associated with the colour. 

For example, purple colour for Cadbury.

Shapes of Goods

A shape mark is given to products that are easily distinguishable as it has some peculiar shape or comes with a packaging that makes it stand out. The particular shape is associated with that product only, so the registration prevents other competitors from bringing out similar products. 

For example, the shape of a coca-cola bottle or the toblerone chocolate.

Sound Mark

Sound marks refers to a particular musical notes that uniquely identify the commercial origin of products or services. A sound mark is only granted when one identifies from the sound itself that what product or service is being talked about.

For example, the four note jingle for Britannia, default ring-tone of a Nokia mobile phone, and the sound of the lion’s roar at the beginning of an MGM-produced film Corporation.

Or why should one have a trademark?

A trademark helps a business enterprise to create a value for their products and services and also helps it outstand among different competitors.

  1. Source of origin- It is one of the essential elements of trademarks, it establishes a sense of belongingness of a product to its place from where it originated.
  2. Product Differentiation- It helps the consumers differentiate between products. A man of average intelligence can distinguish between goods by recognizing the mark on it.
  3. Quality-value Guarantee- A product having a trademark also ensures quality as the customer thinks it has been a famous product and is in great use.
  4. Advertising- A trademarked product serves as a source of advertisement for the business operators as it builds a goodwill.
  5. Asset- It establishes an intangible asset for the trademark holder, it can be transferred, sold or franchised.

What all can be trademarked?

  • Words- These signs include company names, family names, territorial names etc. that are recognized through their names. For example, Chopra & Sons Ltd. is a family name used by the enterprise to distinguish its product from others in the market.
  • Letters and Numerals- These types of trademarks include a specific combination of one or two letters or numerals, which are unique in its sense.
  • Colored marks- These types of marks include any combination of words, letters or numerals in a particular color or color combination.
  • Devices- These types of trademarks include fancy devices or symbols and two dimensional representations of products.
  • Combinations of any words, letters, numerals or devices etc. having some type of logo.
  • Smell marks- Also, known as olfactory marks, these are that type of peculiar marks from which a customer can get to know the origin of the product from its smell itself. For example, a notebook selling manufacturer sells its books with a particular fragrance.
  • Sound marks- Sound marks are also known as audible marks, these types of marks have a peculiar sound from which it is identified.
  • Three-dimensional signs- These types of trademarks include some special type of product or packaging.

Invisible signs- They include signs that can be identified by their touch.

Renewal of Trademarks

  • The application of renewal of trademark should be filed via form TM-12.
  • The application for the same can be made through the registered trademark owner himself or through his agent.
  • But it is recommended that one takes the help of a professional to file for renewal of trademark application to ensure that nothing gets missed and the mark is well protected. Taking the advice of a professional is always a wise idea as they are people who are into this only. When a mark has survived in the market with such competition nowadays, it must also have diversified its field of work. Hence, filing for different classes of marks needs technical help.
  • Once a trademark is registered, the registration is valid for the next 10 years. It is only after these 10 years, the mark needs renewal of registration for being a valid trademark in the market.
  • After the filing is completed, it is important to continuously check the status of the mark that it is approved by the Registrar or not. This process sometimes requires various other formalities to be performed like response from the applicant, therefore, it is essential to periodically check the status of the mark until the registration is completed.
  • Once the trademark application has been approved by the Registrar of Trademarks, then the particular trademark is advertised in the Trademark Journal. A Trademark Journal is one which is an official gazette of the Trademarks Registry.
  • After the publication in the Trademark Journal, other parties have the opportunity to oppose the mark in case they have a problem. However, this process is not followed when an existing trademark is renewed.
  • In case the trademark expires and one does not file within the next six months of expiry then, he or she can still opt for the process of restoration of mark. The Trademark Act, 1999 provides for restoration of mark under section 25(4). One can apply under this section with a prescribed fee only if a period of one year has not elapsed since the expiration of the mark.

After the party has filed for a restoration then the Registrar will look into the case keeping in mind the interest of the affected parties. The mark will be published in the Trademark Journal and if it goes unopposed then the mark will be given registration.

Procedure for Registration of Trademarks

The process of registration of a trademark in India is on a ‘first to file’ basis, hence, it is essential for an organization to file for a trademark as soon as possible, unless there is a possibility of losing the mark in case of a conflict. The applications of trademark are handled and maintained by the office of the Controller General of Patents, Trademarks, Industrial Designs and Geographical Indications, the branches of this office are available in Delhi, Mumbai, Kolkata, Ahmedabad and Chennai. A trademark application should be filed keeping in mind the territorial jurisdiction. The following steps should be followed in the process of registration of trademark:

  • Selection of a Trademark Agent
    Registration of a particular mark can only be done in India when the business carries its operations under that specific mark in the country. The mark holder can hire an agent who will take the responsibility of getting the mark registered. They are experienced people in this industry and can help to take care of the trivial issues. 

  • Determination of the availability and eligibility of the trademark
    The primary task of the agent is to determine whether the trademark is eligible for registration or not. He or she conducts research in the market to see if there is a similar mark.

  • Filing of the application form
    When the power of attorney of the mark is with the agent, he can only complete and file the application form. Basic details such as name, address of the holder of the mark, description of goods and services are to be filled in the form of registration of trademark.

  • Review by the Trademark Office
    The application for registration of marks is reviewed by the Registrar and allots an application number. Once the mark is registered then this number becomes the registration number.

  • Preliminary approval
    The trademark affiliation has the right to decide whether the application that was submitted to the board is to be refused on any grounds under the Trademarks Act. This is followed by an Examination Report which is issued within a month. It is according to this report, the registration centre decides whether the application is to be acknowledged, dismissed or should be set up for a ‘show cause hearing.’ The show cause hearing can have three outcomes – the application can be dismissed, acknowledged, or can be acknowledged with certain restrictions. If a person is aggrieved by the dismissal of the application, he can file an appeal at the  Intellectual Property Appellate Board.

  • Registration
    The mark will be published in the Trademark Journal and within three months of its publication, if no party raises any objections or does not oppose the mark then it gets a green light for registration. The trademark authorities will grant a Certificate of Registration in this regard.

Checklist (Documents Required)- Documents required for trademark registration

  1. Trademark in use
  2. Details of the applicant
    1. Name
    2. Address Proof
    3. Nature of business operations 
    4. Place of incorporation of the company.
  3. The specification of the product or service which is required to get registered.
  4. Time period (specifying dates) as to the use of the mark required to be registered.
  5. Power of Attorney, signed by the applicant

FAQs

Usually, a rejection is raised by the Registry when the name of the mark is not distinct to nature of its business, for e.g., you cannot use the word ‘blue’ for water because it can be used in the case of shampoo. It is also rejected when the mark hurts some religious sentiments or contains some geographical names. It is also rejected when the mark is similar or same to some other registered trademark, so as not to cause confusion.

The Registry of Trademarks has defined 45 classes in which all the types of goods and services lie. In order to apply for a trademark, one has to mention the particular class or classes in which it’s good and services lie.

In case your brand name has been registered but under a different class, then also your mark can be registered until the brand name is not a famous one like Burger King. In a scenario where someone else has moved an application for registration of a mark after you got your mark registered, then you should find out the origin of the mark and send a cease-and-desist letter to the office. If the party does not discontinue its operations with that brand name within the stipulated time period, you can drag the party to the court.

Sadly, when there exists a similar word mark, you cannot get it registered but you can always use that word in a logo and add a prefix or suffix and get it registered as a logo composite mark.

In order to conduct a search, you can do it on the Intellectual Property Database, suppose, for a word mark search, select the wordmark and type the name of your brand. The results will show if there is any same word trademarked. If there exists a same mark, then check the status of the mark, it will show whether it is approved, objected or opposed. One should also check for phonetic similarities with other registered names.

No, registration of a trademark or service mark is optional and not compulsory. However, registering a trademark/service mark offers to the owner of the mark a wide range of benefits and advantages. In India, proper registration of a trademark/service mark is achieved with support of any zonal office of Trademark Registry acting as per the provisions and rules of the TRADEMARKs Act of 1999 and the TRADEMARKs Rules of 2002, and all amendments made thereto so far.

For getting a trademark or service mark duly registered in India for doing a nationwide business in the specified field/class, the owner of the mark required to file the application for registration [in Form TM-1] with the directly concerned regional trademark office, based on the location of him or his company. In the entire India, there are five regional offices of the trademark registry in Mumbai, Kolkata, Chennai, Delhi, and Ahmedabad. And, in order to expand one's business to foreign countries, the owner of the mark will be required to get registration of the mark in the targeted foreign countries as per the provisions and rules of the relevant international conventions related with trademarks described below somewhere.

The (initial) registration of a trademark/service mark is valid only for a period of 10 (ten) years, counted from the date of its registration. Hence, the owner of the registered mark mandatorily required to renew the registration of the same, well within the expiration of this ten-year period, in order to wield the full gamut of trademark rights (mentioned above) for another 10 years. The renewal application is filed through the form TM-12, along with the prescribed fees, with the relevant regional office of the trademark registry.

A person can file for a trademark in the concerned jurisdiction with or without taking priority of a domestic mark. He also has the option to file for an international registration of the trademark vide the Madrid Protocol, that enables registration in different countries by taking priority in one of them.

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