What is a Trademark?

A trademark is a distinctive sign or indicator of some kind that helps in unique identification of the source or the brand of a product or service. It is the ‘brand’ or ‘logo’ distinguishes your product from those of others, giving its holder sole proprietorship over its use.

Any use of the trademark without the knowledge or consent of the owner comes under infringement. It gives the owner the right to sue the transgressor.

Once registered under one of the 45 categories, called classes, your trademark becomes a symbol of your brand and protects your brand by restricting other people from using it. 

Once acquired, a trademark lasts indefinitely so long as it is renewed every 10 years.

TM, SM, and ® Symbol

When you start looking to get your trademark registered, you might be baffled by n number of terms being thrown your way. Some of these are TM, SM and symbol ®. We have enlisted the significance and difference between them so that your registration process flows like a breeze.

‘TM’ stands for trademark. It is the assertion of a trademark by a company while the registration process is still under way. It is temporary and has no restrictions of use. It is mostly used for products that fall under classes 1 to 34.

‘SM’ stands for service mark. It is just the service equivalent of TM. It is to be used by the owner of a service-based venture while they get their trademark registered. These services fall under classes 35 to 45.

Once a trademark is verified and officially registered, the owner gets the right to use the symbol ®.. This shows legal recognition of the trademark by the concerned authorities. It is the final seal of protection of the uniqueness of your product.

What can be trademarked?

Most of anything can be trademarked in India, with just one condition that they possess a distinctive value. Given below is a list of possible trademarks and conditions for their acceptance if any.

• Names – these can be registered as trademarks only if they possess a distinctive character.
• Numerals – so long as they possess a distinctive character.
• Coined words
• Devices
• Signature
• Slogans
• Sounds – musical notations are accepted
• Colour combinations
• Domain names – only is they are being used as goods and services
• Shapes
• Monograms and 3-dimensional shapes

Who can apply for a trademark?

There is little restriction on who can apply to be the owner of a trademark. Any of the following are free to claim rights to their trademarks-

• Individual
• Companies (both Indian and foreign)
• Joint owners
• Partnership firms
• Proprietor
• Society

Current Trademark Fees

Trademark rules underwent some changes in 2017, which included a new pricing structure. You can refer to the pricing given below, but do remember that pricing can change based on specific requirements and situations.

 

Classes of goods and services

All goods and services are categorized into 45 classes. The government has a pre-defined list enumerating what kind of product falls under which class. Goods of different kinds are listed from 1 to 34 while services begin from 35 and go on till 45.

It is imperative to go through this list and to make your appeal for trademark registration accordingly.

You may refer to a detailed version and breakdown of the list of classes as defined by law here.

Selecting a good trademark

Selecting a good trademark is very important. A good trademark should be easy to remember by not being too complicated or lengthy. It can be suggestive of the quality but not descriptive of it. And obviously, it shouldn’t be prohibited under the Trademarks Act.

Selecting a good, distinctive trademark will get your halfway through brand protection already. This is why trademark must be chosen very carefully. The scope of legal protection you can expect to get for your brand will depend majorly on the trademark of your choice. 

So, we break down a few guidelines you must follow while choosing a trademark to ensure that it’s one that sets you apart.

• Make it distinctive – Make sure you do full research of the existing trademarks and take full precaution not to copy any existing ones even in the least. It is always a better choice to use terms that are uncommon and will set your brand apart.

Feel free to use arbitrary words that don’t have much reference to your goods/services, like Apple for computers, Lotus for software, etc.

• Use invented words – Feel free to invent your own words to best describe your brand. These are coined words and have never been used. Examples include Spandex, Exxon, Kodak, Viagra, and several other famous trademarks.

They can also be made up by combining pre-existing words. One common example of a made-up trademark is “Microsoft”, which is a combination of ‘micro computers’ and ‘software’.

• Use animal or plant names – They are quite memorable and can be associated with a quick mental picture. They can still be distinct while conveying your purpose if used properly. Some common examples are – Apple computers, Ford Mustang, Puma Apparels, etc.
• Avoid using Three Letter Acronyms (TLAs) and numbers - These aren’t easily recognizable and take a lot of time and money in achieving much brand value. You are better off staying away from them.
• Avoid using Superlative words or ones that are laudatory. These include the likes of Premium, Deluxe, Gold, etc.
• Avoid using Words that are too descriptive. Using terms like Cooler for refrigerators would fall under this category.
• Avoid words that might be a direct reference to the character or quality of the product.These include the likes of – Best choice, Super, etc.
• Avoid using common names and surnames. Such names have little distinction and can only be registered if they have already gained recognition and distinction through long use.

Apart from these, to make sure you are absolutely safe, you must ensure that your trademark does not hit any ofbelow-mentioned conditions-

• Causes confusion,
• Consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade. Have a question about this? Get free legal advice here. (Provide Lawyered link)
• Hurts religious sentiments,
• Is obscene
• Uses national emblems or any other marks which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950.

How to do a Trademark Search

Doing a trademark search in India is pretty easy, for people and professionals who are well-versed with trademarks and their classes. Although you can use the online search database of Indian Trademarks and Patents, it is best advisable to get help when looking to get your trademark registered.

Request Free Trademark Filing Proposals 

If you do intend on seaching for trademarks yourself, once you visit the database you will see three types of searches-

A. Workmark search – The wordmark search allows for retrieving trademarks which use the same word as that of the query entered.

B. Phonetic Search – The phonetic search interface searches for similar sounding trademark words. The trademark office website, however, provides no information in terms of how the system works at the backend. But this is a useful search type as it sometime provides results having a different spelling but a similar sound.

C. Vienna code search – Sometimes, a trademark application can also contain visual elements which may make it difficult to search for similar marks. India being a member of the Vienna convention also follows the international classification of the figurative elements in a trademark.

Now the 2nd step is that, applicant needs to mention a “class” under which applicant is registering his trademark. Classes are a categorization of goods and services. The “class detail tab” is given at top of portal. 

Apart from searching this trademark database, use the MCA database through which you can do a name search of already registered companies and also search for Indian trademarks registered abroad under the Madrid protocol.

The Comptroller General’s Office supervises trademark registration and other related regulatory matters in India. Its main task is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the register of trademarks. It also acts as a resource and information Centre and is a facilitator in trademarks related matters in the country.

Apart from using the online database, you may also request the registrar for an opinion on the distinctive character of the mark. However, such opinion or report is not binding.

Keep in mind that the two essential qualifications for trademark registration are:

• It must be capable of being represented graphically,
• The mark must be capable of distinguishing the goods and services of one person from those of another.

Therefore, a trademark which is either identical with or similar to an earlier trademark cannot be registered. For instance, an application for trademark ‘Venus’ for chocks for fluorescent tubes was refused on ground that ‘Venus’ mark was already in use in respect of water heaters and coolers and was in existence from 1961.

Any wrongful or unlawful use of a trademark by someone other than the registered use qualified as trademark infringement. Even a deceptively similar mark, if not identical, may lead to trademark infringement. This is so because a registered trademark gives the registered user exclusive rights to enjoy and exploit the mark. A recent example of this is the dating app Tinder alleging trademark infringement against 3nder, an independent app for non-monogamous couples.  

Filling a trademark

There are several basic requirements for filling a trademark. Though, they are quite basic, it always helps to consult a trademark lawyer to avoid any fault possible. 

The requirements for filling a trademark are as follows:

• The name, address and nationality of the applicant. In case of a partnership firm, the details of all the partners should be mentioned. Special mention should be made in case any partner is a minor.
• The state or company of incorporation must be mentioned in case the venture is a company.
• The description of the good or service along with its class as prescribed by the government.
• A soft copy of the trademark to be registered.
• In case the mark consists of non-English words, a translation of the non-English parts into English must be attached.
• A copy of the form duly filled.
• If it has been put to use, then the date of the first use of the trademark in the country.
• In case the applicant wishes to claim priority from an earlier filed convention application, details of this application must also be submitted. These include the application number, filling date, country and description of goods/services. 
  A certified priority document or a notarized copy of it is also required. If this is not in English, then a copy of its English translation must be made available. A copy of this priority document can be submitted within a month from the date of filling the application.
• A power of attorney duly signed by the applicant. This required no legalization or notarization. In India, this power of attorney is executed on a Rs. 100 stamp paper. 
  Though, the power of attorney is not necessarily required at the time of lodging of the application and can be submitted later on.

Steps for Trademark Registration

You can file your application for registration in the Trademark Office under whose jurisdiction your principal place of business falls. In case, your place of business is outside India, you will have to file your application in the Trademark office under whose jurisdiction the office of your lawyer is located. 

Request Free Trademark Filing Proposals 

 The trademark registration process usually takes place through the following steps-

• Trademark search – You must make sure that your intended trademark doesn’t coincide with any pre-existing trademarks. A comprehensive trademark search is absolutely imperative so that you are completely assured of the validity of your trademark.

The complete extent of the importance of a trademark search and the procedure are detailed above. 

• Trademark application – This is the most crucial part. It is the process of trademark creation and submission.

It is a rather simple process. Make sure you have all the requirements for trademark application mentioned above and are up to date with all your paperwork. This is usually the work of just one day.

Make sure that you follow all the rules listed by the government and track all the new developments in the procedure updated by the government.

As of March 2017, the government updated the number of forms required for the procedure and also updated the price list for registration.

• Issuance of receipt – On filling the trademark application, you will be allotted an official receipt with the filling date and number that is allotted to your application, from the registry.

The receipt can take up to five days from the date of registration to be allotted.

• Examination by the registrar – The complete trademark application is then formally reviewed by the Indian Trade Marks Office. It is examined to make sure the trademark can be registered, does not bear any similarity with existing marks, is not obscene and doesn’t hurt any religious sentiments.

The public is given a notice of your application. This ensures that the trading public whose rights might be adversely affected by your mark’s registration gets adequate opportunity to voice their concerns.

In case the application is not opposed or the relevant time period expires the application is allowed and a Letter of Acceptance (TLA order) will be issued. Following this, the trademark will be published in the Trademarks Journal. Now, if there is no opposition within 4 months from the date of publishing in the Trademarks Journal, the trademark registration certificate will be issued.

• Hearing before the registrar – In case an objection is raised, an official examination report will be issued.

If you want to overcome the objection, you must file a written response or evidence of the distinctiveness of your mark. Following this, an interview or hearing with the examiner will be scheduled.

These hearings are usually between two parties, the applicant and the objection. The registrar my also require applicant to file an affidavit to testify the fair use of such a mark to the objecting person.

This objection can be extended up to a period of approximately 3 months.

Once the registrar is sure of the settlement of the matter, the publication process as described above will ensue.

• Trademark registration – Overall, the tedious process of registration takes about 20-24 months, even in cases where no objections are raised. Although, the application number that is allotted is valid from the date of application itself.

• Renewal – A registered trademark is valid for a period of 10 years from the date of application. This registration needs to be renewed every 10 years, and can be for an indefinite period of time, by paying the renewal fees. 

Advantages of getting a trademark for your brand 

You can hold rights to a mark even without registering it with the USPTO, but registration does have certain advantages. Federal registration of a mark gives rise to the legal presumption that the registrant is in fact the trademark owner. It also allows a trademark owner/registrant the ability to file a lawsuit related to the mark in the federal court system.

The many advantages of getting a trademark for your brand can be enumerated as follows –

• It serves to establish a unique identity for your company which can’t be forged. No other person or company can claim or use your trademark once it is registered.
• As the registered owner of your trademark, you get exclusive legal rights to your trademark. This right is protected by law. It allows you to take legal action against anyone who tries to use or copy your trademark without your consent.

But, no such action can be taken against the aggressor if the trademark isn’t registered. Your brand will be exposed to arbitrary usage by anyone in such a case.

• Trademark registration saves you from infringement. Many cases are abound of trademark infringements which serve as lessons all stressing the importance of proper trademark registration. 
  Be sure to go through to go through this list of trademark infringement cases and take down necessary notes.

• It also serves as an asset which you can easily sell, franchise or lease to another party. It serves the purpose of a kind of intellectual property.
• As a symbol of your brand, it serves to build a sense of trust on the quality of your product. It serves to establish your goodwill in the market.
• Any registered trademark can be easily found in the trademark database of the government. This is irrefutable and can’t be tampered with.

It is especially important for startup owners to understand the importance of trademark registration as they just can’t afford to make the mistake of leaving their brand unprotected.

As a new entrant in the market, a startup founder must do a comprehensive trademark search to ensure that he/she is not infringing on another company’s trademark. Trademark registration may be denied in case it resembles the proposed mark to an existing one or prohibited one.

Read More: Patent, Copyright, Trademark - Protect Your Intellectual Property

Registering your trademark internationally 

Trademarks are area-specific. So, if you have any plans to globalize your brand now or in the future, it is imperative that you get it registered internationally.

It is sure to be a heartbreaker to find out that your precious brand, that you worked so hard to build can’t be expanded abroad due to some overlooking on your part in the initial stage.

It is advisable to register your trademark internationally in the initial stages itself. This is to ensure a smooth passage into foreign market and to secure exclusive rights to sell your product in foreign market. Otherwise, you face the risk of counterfeiting against which you won’t be able to protect yourself. This is sure to cost you a lot of time and money, involving foreign law proceedings you may know nothing of.

You must make sure that you are the first party to register your trademark abroad so as to avoid any hassle and infringement risks. It would also provide you the opportunity to license or transfer the trademark to others.

You can read all about the procedure involved in assigning and transferring trademarks. 

Usually, every country has its own procedure for trademark registration. This must be followed in order to secure your brand in foreign land.

But, international application is also available under Madrid Protocol. With over 90 countries as members, it gives you trademark security in its member countries with just one registration.

Registering with Madrid Protocol might save you a lot time and money if you wish to expand in multiple countries.

But, if you don’t want to expand too much and your product is specific to only certain markets, then you might want to narrow down the places of your intent. This might also be due to budget reasons.

In such a scenario, it might serve you well to choose wisely the countries of expansion. This will depend on the benefits offered by each country on registration. One such lucrative place of expansion is China.

With an ever-growing consumer-base, it has one of the highest potential for expansion. You can read more about why it is a wise idea to register your trademark in China.

Why you must get a trademark attorney to file it. 

Entrepreneurship is a tough job, which requires a lot of hard work and even more research. This might leave you feeling like a ‘know-it-all’. But, an expert is an expert.

So, it would do you a whole lot of good to consult an expert trademark attorney before filling your application. In fact you must get one to fie it for you and overlook the entire procedure.

You might ask why that is necessary. The answer is for the very reason lawyers ever are. As with any legal procedure, there are a lot of intricacies in this process too. These are only understood by someone with intimate knowhow in the matter.

Further, if ever you get stuck on any step along the way, it might cost you a lot and maybe even your brand if you haven’t already taken all precautions necessary under the guidance of a lawyer. Moreover, getting a lawyer involved at a later stage, while in the middle of trouble, will only cost you more.

It is best to just the experts handle it while you sleep in peace knowing that your brand is fully protected. 

For legal advice on trademark registration, you can consult expert intellectual property and trademark lawyers here at Lawyered. 

Frequently asked questions 

How do I find out if a trademark is already registered in India?

You can do a comprehensive search of the Indian Trademark Registry database to find out if there is any existing trademark that is identical or similar to your intended trademark. This search can be conducted online at the official Trademark Registry website.

What is the difference between trademark and copyright?

A trademark stands for intellectual property assignment for a work or logo. Whereas, copyright refers to protection to unique content which might include books, songs, software, etc.

While Copyright registration does not provide any protection to brand name, it is highly recommended if you want exclusive rights for trademark representation.

What is the validity of trademark registration?

A registered trademark is valid for 10 years from the date of registration. After that it can be renewed indefinitely every 10 years by paying a renewal fees.

How long does it take to register a trademark?

Registration of trademark is a lengthy process which might take anywhere from 20 to 24 months. This time period can be extended in case objections are raised. 
But, a trademark application number is issued with a day or two of filling the application and can be used temporarily.

If my company is already registered under the Companies Act, do I still need to register my trademark?

Yes. Unlike trademark registration, registration under the Companies Act does not provide ownership rights.

When is the difference between the © and ® symbols?

The © symbol stands for copyright and denotes that the product bearing the symbol has been copyrighted by the owner.
On the other hand, the ® symbol denotes a registered trademark and gives the owner exclusive rights over the trademark.

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