Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It is a popularly known as brand or a logo that one person uses to distinguish his products from those of his competitors.
- What is a Trade Mark?
2. Difference between Trade Mark & Trade Name
Trade name is an official name under which an individual or company conducts its business. While a trademark offers legal protection for a particular brand, which may be associated with a trade name. Trade name does not provide you with legal protection, while a registered trademark provides you with legal protection. Registering a trade name does not prevent anyone else from operating a business under the same trade name. While a registered trademark can give you legal protection from someone else using or stealing the same.
3. What are different types of Trade Marks?
(a) Any name including personal or surname of the applicant or predecessor in business or the signature of the person.
(b) Invented or coined word or any arbitrary dictionary word.
(c) Letters or numerals or any combination thereof.
(d) Devices or symbols
(e) Monograms or lable
(f) Combination of colors or even a single color in combination with a word or device
(g) Shape of goods
(h) Packaging or combination of colors or any combination thereof
(i) Marks constituting a 3- dimensional image including shape or packaging of goods.
(j) Sound marks – reproduction of the same has to be submitted in the MP3 format not exceeding thirty seconds’ length recorded along with a graphical representation of its notations.
4. How to select a unique trademark?
(a) If the mark is a word mark, it should be easy to speak, spell and remember.
(b) The best trademarks are invented words or coined words or unique geometrical designs.
(c) Avoid trademarks that are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another.
(d) Avoid trademarks which show the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods.
5. Classification of Goods and Services
Classification of goods and service for the purpose of registration of trademark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organization (WIPO). The same can be accessed through https://www.wipo.int/classifications/nice/en/
6. Why is it advisable to claim “use of the mark” and how important is it?
In India, common law supersedes codified law and for this reason, ‘use’ of the trademark in India becomes pivotal in claiming rights over a trademark in India. Where a person/business uses a trademark even prior to a registrant, the said person assumes ownership over the mark being a prior user.
Claiming the “use” of the mark plays an important role when the application for registration of the trademark is examined by the examiner/ registrar and similar or identical marks are cited in the Examination Report. A ‘prior user’ would be able to overcome the objections of similarity if he is able to establish and prove beyond reasonable doubt he is the ‘prior user’ or ‘first user’ in the line of business. Same holds good in an opposition proceeding where if ‘prior use’ is displayed with sufficient and coherent evidence, these proceeding would tend to naturally favour the ‘prior user’, all other terms being equal.
On the assumption that ‘use’ is established, the common law permits and supports the ‘prior user’ of the trademark, even if it is identical or similar to an existing registered trademark proprietor and for this reason claiming the use of the mark in India, while filing a trademark application, becomes necessary and important.
7. What kind of documents would be helpful in showing the “use” of the mark?
The following types of documentary evidence, including but not limited to, could be submitted as proof of use of the trademark in India:
- Invoices/Bills/Vouchers with respect to business activities carried in India.
- Contracts or Agreements with any Indian entities.
- Details of total sales to customers in India.
- Advertisements/marketing/promotional materials (with date) of the trademark in India.
- Publication of trademark in any journal.
- Any such other document which would show the dissemination of the subject mark in India.
Any documentary evidence must contain the exact representation of the trademark and the specific date in order to claim usage from that date. It is also advisable to submit documents that show continuous use since it is as important to establish that the trademark is continually used as it is to show use itself.
8. Stages in Trade Mark Registration Application
(a) For safe side, a trademark search (identical search or similarity search) may be conducted. Search can be done at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
(b) Filing of the Trade Mark Application – TM-A
(c) Application formally examined by the Registrar/Sr. Examiner of Trade Marks and the Examination Report issued. The mark is examined basically on three grounds i.e. distinctiveness, descriptiveness and similarity to the prior marks. To qualify for registration, mark should be distinctive, non-descriptive, and there shouldn’t be any similar prior marks.
(d) If an objection is raised, an official examination report will be issued.
(e) Proper para wise reply (strictly in accordance with Trademarks Act) to the Examination Report to be filed. Failure to respond to examination report within the statutory time period of 30 days can lead to abandonment of application.
(f) If the Examiner is satisfied that the application for registration of the trademark complies with all the necessary provisions under the act, the mark is advertised before acceptance. The Registry may also call the applicant / attorney for the applicant for personal hearing regarding the acceptability of the mark.
(g) Once the mark is advertised in trademark journal, it is open for a period of 4 months for third parties to oppose.If no opposition is received during the specified period, the application / the trademark is deemed to be registered.
- 9. Forms & official Fee for applications
| Sr. No. | Particulars | Amount (Rs.) (physical Filing) | Amount (Rs.) (E-Filing) | Form |
| 1 | Application for registration of a trademark /collective Marks / Certification Mark / Series of trademark for specification of goods or services included in one or more than one classes. | TM-A | ||
| Where the applicant is an Individual / Startup / Small Enterprise | 5000 | 4500 | ||
| In all other cases | 10000 | 9000 | ||
| *Fee is for each class and for each mark. | ||||
| 2 | On a notice of opposition or application for rectification of register or counter statement *Fee is for each class opposed or counterstatement filed. | 3000 | 2700 | TM-O |
| 3 | For renewal of registration of a trademark for each class | 10000 | 9000 | TM-R |
| 4 | Application for renewal with surcharge of registration of a Trademark for each class (within 6 months from the expiration) | 5000 Plus renewal fee applicable under entry 3 | 4500 Plus renewal fee applicable under entry 3 | TM-R |
| 5 | Application for renewal with surcharge/ restoration and renewal of a Trademark. (After 6 months and within 1 year from the expiration) | 10000 Plus renewal fee applicable under entry 3 | 9000 Plus renewal fee applicable under entry 3 | TM-R |
| 6 | On application under section 45 to register a subsequent proprietor in case of assignment or transfer for each trademark. | 10000 | 9000 | TM-P |
| 7 | On application for: Extension of time, or Certified copy, or Duplicate Registration Certificate, or inspection of document, or Particulars of advertisement to registrar, or seeking grounds of decision of Registrar, or Enter in the register and advertise a note of certificate of validity under rule 127, Amendment in trademark application, or Particulars of advertisement of a trademark to Registrar under rule 41. | 1000 | 900 | TM-M |
| 8 | On application for: Review of Registrar’s decision, or Petition (not otherwise charged) for obtaining Registrar’s order for any interlocutory matter in a contesting proceeding, or Any other matters not covered in other TM forms. | 3000 | 2700 | TM-M |
| 9 | On application under rule 34 for expedited process of an application for the registration of a trademark | TM-M | ||
| Where the applicant is an Individual/ startup/ Small Enterprise | Not Allowed | 20000 | ||
| In all other cases | Not Allowed | 40000 | ||
| *Fee is for each class and for each mark |
For further details or query on the Trade Marks, please feel free to contact us at sarvarthlegal@gmail.com or call at +91 9910206525; +91 120 4180675
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