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 trademark registered in India 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 registered in India lasts indefinitely so long as it is renewed every 10 years.
TM, SM, and ® Symbol
When you start your trademark registration search, 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.
Who can apply for a trademark?
There is little restriction on who can apply to be the owner of a trademark or who can do trademark registration search. Any of the following are free to claim rights or trademark registration search to their trademarks-
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 so trademark search in India is a big deal. A good trademark search in India 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.
Trademark search in India should be a good and 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.
Feel free to use arbitrary words that don’t have much reference to your goods/services, like Apple for computers, Lotus for software, etc.
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’.
Apart from these, to make sure you are absolutely safe, you must ensure that your trademark does not hit any ofbelow-mentioned conditions-
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.Trademark search in India can be made easy my the online outcomes.
If you do intend on searching 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:
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:
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.
The trademark registration process usually takes place through the following steps-
The complete extent of the importance of a trademark search and the procedure are detailed above.
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.
The receipt can take up to five days from the date of registration to be allotted.
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.
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.
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