Trademark Registration Process

Trademark Registration Process

TRADEMARK- Intellectual Property Right

How to apply for the Trademark?

What is a Trademark?

A Trademark generally refers to a “brand” or “logo”.

Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality. 

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.

What can be registered as a trademark?

Any word, name, device, label, numerals or a combination of colors that can be represented graphically (in a paper) can be registered as a trademark. The trademark to be registered must also be distinctive for the services or goods for which it is proposed to be registered.

PROCEDURE FOR REGISTRATION OF TRADEMARK IN INDIA:   

Website: http://www.ipindia.nic.in/

A) Preliminary Search  Click here for web Address

Before applying for the registration of a trade mark, an applicant should conduct a search to find out whether the trademark can be registered or not and also whether there exists in the records a trademark which could be confused with the intended trade mark.

Search is not mandatory but is advisable for the following two reasons;

1.       Help one in determining whether the application has a chance for success, or

2.       whether it would be a waste of time and money to try and register it in it's present form. 

Public Search

B) Checklist of Documents & Information Require

Following details are required for Trade Mark:

1. Brand Name to be registered as Trade Mark
2. Name of the Proprietorship/Firm/Company:
3. Name of proprietor/Partner/Director (with father’s Name )
4. Address of Registered Office of the Company/Firm:
5. Since when the trade mark has been first used,
6. Sent the Image file of your trademark (if it a logo, label or composite mark).
7. Nationality of Proprietor/Partner/ Director:
8. Details of goods/services for which trade mark is to be registered
9. (Logo must be in JPG Format and the size of IMAGE must be with in 8 cm by 8 cm)
10. Signed copy of Power of Attorney in TM-48 format for Agent Authorisation, to be Pinted on a Stamp Paper

As soon as you make the application you can start using TM nearby your mark. After filing an application trademarks registry will generate acknowledgement that is the proof of your application.

#However TM can be use for the marks which are intended to use or registration

New Trade Marks Rules 2017 notified w.e.f. 6th March 2017

The fees for New Trademark Application in one Class has been increased to Rs 9000 (for e-filing) and Rs 10000 for Physical Filing

Further Rs 4500  (for e-filing) and Rs 5000 for Physical Filing has been prescribed for Individuals, startup, and small enterprises.

& For Professional Service - Ping me (7838204665)

Note: - Trademark Registration is valid for ten years after 10 years you have to renew the trademark

“Startup” means

(i) an entity in India recognised as a startup by the competent authority under Startup India initiative,

ii) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect.

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

"Small Enterprise" means:

(i) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and

(ii) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006.

Explanation: “enterprise” means an industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry.

(iii) In case of a foreign enterprise, an enterprise which fulfills the requirements as mentioned in clauses (i) and (ii) above

Explanation: In calculating the investment in the plant and machinery, reference rates of foreign currency of Reserve Bank of India shall prevail

C) File Online Application through Trademark Agent 

D) Unique Application Number shall be Alloted which can be tracked online 

                                                                                              Click Here for Status

E) Status of trademark application is "Send To Vienna Codification". 

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 "Send To Vienna Codification". As a part of the trademark registration process, any trademarks comprising figurative elements/logo is assigned a Vienna Code by the Indian Trade Mark Registry. 

This is one of the first steps taken by the Registry where the trademark comprises a figurative element/logo. Such figurative elements/logos are codified according to the Vienna Agreement as per the link (Click for Link)

F) The status of trademark application is usually changed to Fomalities Chk Pass or Formalities Chk Fail, and Other Stages explained below.

Fomalities Chk Pass - Verification of Docs

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".

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 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.

 "Exam Report Issued" / "Accepted". 

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.

 "Objected" 

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.

"Advertised before acc" or "Advertised" or "Accepted & Advertised". 

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.

 "Opposed"

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.

"Send Back to EDP". 

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.

 "Send to PRAS". 

PRAS refers to Pre-Registration Amendment Section. Any amendments which have been filed prior to registration such as amendment of proprietor details, address, specification of goods, etc. are dealt by PRAS Section. 

G) Publication in Trademark Journal

H) Trademark Registeration

 MOST IMPORTANT

Significance and Use of Word “TM” (Reference www.forbes.com)

Question: When should the trademark symbols be used?

Answer: There is no requirement to use the TM or SM symbols and their use has no legal significance, but it is wise to do so. When you use the TM or SM, you notify the public of your claim of branding rights in a particular mark and in turn dissuade others from adopting the same or similar mark for the same or similar products or services. This staves off unwitting trademark infringement, which disrupts the free trade of goods and services in the marketplace.

You may only use the symbol with a registered mark and as applied to the goods and/or services listed in the registration. While you are not legally required to use the symbol, failure to use it is not without consequence. In an enforcement action, you will forfeit your right to recover lost profits and money damages unless you can prove the defendant had actual knowledge that your mark was registered prior to the infringing activity. This can be a very high burden and one unnecessary to bear.

The law provides that if a trademark owner uses the registration symbol properly, then any future defendants will be deemed to have constructive knowledge of the mark’s registration. This means that even if they did not have literal knowledge of the registration, it is reasonable to conclude that they should have known the mark was registered.  In simple terms, no one can feign ignorance if the registration symbol is properly used.

Question: How should people use trademark symbols?

Answer: The appropriate symbol should appear in superscript in the upper right-hand corner of a mark. If it is not practical or aesthetically displeasing to place it there, it should be dropped to the lower right-hand corner of the mark.  A symbol should not be placed above, below, or to the left of a mark. Placement is not regulated by law, but adherence to norms is strongly advised.

In written documents – articles, press releases, promotional materials, and the like -- it is only necessary to use a symbol with the first instance of the mark, or with the most prominent placement of the mark. It is a common misconception that each and every instance of the mark should bear a trademark symbol. Overuse creates visual clutter and may detract from the aesthetic appeal of the piece. Provided there is at least one conspicuous use of the TM, SM, or ® on the face of the writing, do not be afraid to eliminate superfluous markings.

Question: What are the most important take a ways that the audience should know about trademarks?

Answer: Use TM or SM for unregistered marks only. This includes marks that are the subject of a still-pending application in the Trademark Office. Use TM for marks that represent goods and SM for marks that represent services. If your mark covers both products and services, TM is recommended.

Only use the encircled "R" for registered marks. State registrations do not qualify. Use of this symbol is a privilege and should be treated as such at all times.

Trademark Classes List of Goods and Services:

Class 1: is for Chemicals, Resins, and Plastics.)
Class 2: is for Varnishes, Paints, and Anti-corrosion substances
Class 3: is for Cosmetics, Hair Oils and Lotions, and Cleaning Preparations
Class 4: is for Greases, Lubricants, and Fuels
Class 5: is for Pharmaceutical, Medical, and Sanitary Preparations
Class 6: is for Goods of Metals and Alloys, Ironmongery and Hardware Products
Class 7: is for Equipments and Machineries
Class 8: is for Hand-operated Devices and Tools
Class 9: is for Scientific, Electrical, and Technological Apparatus
Class 10: is for Medical and Surgical Instruments and Apparatus
Class 11: is for Heating, Cooling, Drying, and Refrigerating Apparatus
Class 12: is for Land, Air, and Water Vehicles
Class 13: is for Explosives and Firearms
Class 14: is for Precious Metals and Stones, and Jewelry Items
Class 15: is for Diverse Musical Instruments
Class 16: is for Paper Goods, Stationery Products, and Printed Materials
Class 17: is for Rubber and Plastic Goods and Products
Class 18: is for Products made of Hides and Leathers
Class 19: is for Various Non-Metallic Building Materials)
Class 20: is for Furniture, and other precious household Articles
Class 21: is for Kitchen Utensils, Household Appliances and Glass products
Class 22: is for Ropes and Cordage, Fibers, and Stuffing materials
Class 23: is for Threads and Yarns for uses in textiles
Class 24: is for Textiles and Fabrics
Class 25: is for Apparels and Clothing
Class 26: is for Fringes and Fancy Goods and Products
Class 27: is for Floor Coverings and Wall Hangings
Class 28: is for Toys, Sporting, and Sports Goods
Class 29: is for Meats and Processed Food Items
Class 30: is for Auxiliary Food and Beverage Items
Class 31: is for Agricultural and Horticultural Products
Class 32: is for Beers, Light Beverages, and Fruit Juices
Class 33: is for Wines and Spirits

Class 34: is for Tobacco Products and Smokers' Articles

Services:

Class 35: is for Advertising and Business Services
Class 36: is for Insurance and Financial Services
Class 37: is for Building, Construction and Repair Services
Class 38: is for Telecommunication Services
Class 39: is for Transportation and Storage Services
Class 40: is for Treatment of Materials Services
Class 41: is for Education and Entertainment Services
Class 42: is for Computer, Scientific and Legal Services
Class 43: is for Hotels and Restaurants Services
Class 44: is for Medical, Beauty, and Agricultural Services
Class 45: is for Personal and Social Services Services

You may ping us for any Professional help related to Trademark filing, opposition, hearing cases etc. Furthermore we also deals in Patent, Copy Rights etc registrations.​

Thanks & Regards

Ravi Garg 

Company Secretary 

91-7838204665, 

csravi2014@gmail.com

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