An Overview of Trademark Registration in India

An Overview of Trademark Registration in India
02 July 2019

An Overview of Trademark Registration in India

Introduction

A trademark is any mark, name, logo, symbol, figure, letter, word, used by an individual or a company in order to uniquely identify its goods or services from those manufactured or sold by others and hence must be capable of distinguishing one’s goods or services from others. Trademark registration, procedure, rectification, appellate, offences, and penalties are covered and governed under The Trade Marks Act, 1999.

Trademarks are of a different type:
  1. Goods / Products Trademarks
  2. Service Trademarks
  3. Collective Trademarks
  4. Certification Trademarks 
Why we should register a trademark?

There are many legal and business (branding and marketing) benefits of trademark registration:

  1. A trademark once registered can be licensed
  2. A trademark that is registered can be transferred, but this is not possible in case of a common-law trademark, which can only be transferred with the business
  3. A registered trademark gives credits to the source of the goods or services
  4. A registered trademark guarantees security & quality
  5. Advertisements for goods and services become easy on registering a trademark 
Documents required for Registering Trade Mark

The below mentioned is the list of documents required for trademark registration in India:

  1. A duplicate of the trademark or of the logo selected. In the case of a trademark for word, a logo is not required.
  2. Details like Name, Nationality & Address of the applicant.
  3. The incorporation certificate in case of company or LLP.
  4. In the case of the company is eligible for the lower filing fee, can refer Udyog Aadhar Registration.
  5. A detailed description of goods or services represented by the mark.
  6. Trademark application requires a trademark Class (out of total 45 trademark classes) to be mentioned, but one can also file multi-class (Class 99) Trademark application.
  7. The power of attorney in Form TM-48 Format (Form of Authorization of an agent) should be signed by the applicant.
What is the validity of registered trademark?

Once a trademark application is filed in the TradeMark office, the applicant can begin using the TM symbol, and if the trademark is registered then applicant specifies the ® symbol across his trademark. All registered trademarks are valid for a period of 10 years from the date of application.

At the end of validity of a trademark, a trademark can be renewed easily by paying the Government fee for registration within 6 months through Form TM-12 (Renewal of Registration) from the date of expiry of trademark.

An expired trademark can be restored through Form TM-13 (Restoration & Renewal) after six months and within one year from the expiration of the last registration of the trade mark.

What is the Registration process for a Trademark?

Being the very first step and falling under the “first to file” basis registration process of India, it makes it crucial to register as soon as possible. Normally the registration process takes 4 to 24 months to get your hands on the complete registration.

The application should be filled according to the territorial jurisdiction normally, though you will be provided with the trademark application number within one or two days after filing. The applications of the trademark are under the control of the Office of Industrial Designs, Controlled General of Patents, Trade Marks, and Geographical Indications. Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai are the places where the branches for these offices are present.

The registration process of the Trademark takes the below mentioned steps:

Step 1: Extensive Search for Trademark prior usage and existence: The very first step is the trademark search. Every application has different kinds of registrations for the particulars that suit the interests and work of people. So searching first is a way to start good, that too in both, for various combinations of similar marks on the intellectual property website. If by any chance any kind of matching marks are found, the description showcasing the same set of goods or services proposed in front of you will go under check.

Step 2: Document preparation for the trademark Application: When the trademark search is complete, a trademark application is prepared with applicant details (name, address, email etc.), trademark class, description, device logo. These details are checked by the Trade Mark Attorney (who files the trademark application). Once every supporting document is in order, then Form 48 (Agent Authorization) and TM-1 (Application for Registration) are signed.

Step 3: Online filing of the Application: The trademark filing is supposed to be done in a complete manner with the Trade Mark Registry. Also, the Government fee for registering a trademark is provided and is dependent on the type of applicant it is. For small business, enterprise, and individuals the government fee is Rs.4500. Whereas for all the other applicants, it is Rs.9000. A different fee setup is present for the attorney professional and for each application it is Rs.3500.

Step 4: Processing done by the Registrar: After the filing of the trademark application, the processing of the application starts, the status of the trademark application is then supposed to be checked as it undergoes the processing by the registry. In order to be updated about the application, one can check the status of the process anytime from registry website by searching their trademark application number, or email notifications are also received by the attorney on email supplied during the filing.

Step 5: Objections raised by Registrar: Trademark application are likely to be refused on Absolute grounds (as per section 9 of Trademarks Act, 1999) or Relative grounds (as per section 11 of Trademarks Act, 1999). If any objection is found in the filed trademark application, a reply of the objection is required to be submitted by the applicant within the time period of 30 days.

Step 6: Acceptance and Advertisement in Trademark Journal: If a trademark application passes every check of the registrar and seems fits for advertisement, then it is published in trademark Journal.

Step 7: Opposition by Parties: Once a trademark is published in trademark journal it can be opposed by parties affected due to registration of trademark through Form TM-5 (Notice of Opposition). Likewise, if there is a notice of opposition, then the trademark applicant must respond in the provided time period through Form TM-6 to relieve the concerns of the counter party.