“Every Trade Mark you build adds to the financial value of your business, much more than your tangible assets”
― Kalyan C. Kankanala, Fun IP, Fundamentals of Intellectual Property
What is Trademark?
“Trademark is a mark/symbol in the form of a word, name, logo, device, label, numerals or combination of colours that individualises the goods/services of a business organisation and distinguishes them from the goods/services of its competitors.”
Trademark is a branch of Intellectual Property Rights that identifies the brand owner of a particular product or service. The brand owner can be an individual, firm, business organisation or any legal entity.
Why Trademark Registration?
Trademark Rights are acquired by registering the mark/symbol. There is no legal requirement that marks are to be registered. However, Registration of a Trademark provides an identity to your goods/services by protecting the uniqueness of your business name or logo.
Registered Trademark can be sold, licensed or assigned just like any other form of assets.
Trademark Registration can alter the end result of any legal dispute regarding a claimed infringement of a mark or the use of a mark that is confusingly similar to your mark.
Benefits of Trademark Registration
- Creates Brand Awareness
- Builds brand image
- Differentiating the products
- Global Filling of Trademark
- Intangible Asset
- Protect goodwill
- Legal protection against Infringement
Trademark Registration in India
Trademarks are registered under Trademark Act, 1999 and listed by the Controller General of Patents, Designs and Trademarks, Ministry of Commerce and Industry, Government of India.
Registered Trademark provide the intellectual property right to the Registered Proprietor to take legal action or obtain relief in respect of infringement of Trademark.
Who can Apply?
- Individuals/ Sole Proprietors
- Proprietorship/ Private Firms
- Partnership Firms
- Companies- Public/Private/OPC/LLP
What can be Trademarked?
Brand Name-The unique name of your business organisation.
Logo-The symbol or mark that symbolises your business organisation.
Product Names- The individual product names or the device image of the goods/services that you create can be trademarked to keep their identity.
Punchline/Tagline- The slogan/tagline that individualise the identity of your organisation should be registered to protect it from infringement.
The registration procedure in India is based on the ‘first to file’ system. It is therefore important that the rights holder applies for the registration of its mark as soon as possible. The different steps that are involved in the registration process in India are as follows:
Step I: Creation of design/logo/mark/wordmark
Step II: Selection of Class
The trademark offers you the right to sell under a particular brand name within a certain sector in the economy. In total, there are about 45 sectors and each sector is named as a class. Goods and services are classified into 45 different classes by the Trademark Registry. Every logo or brand name has to be registered under the appropriate class.
Step III: Trade Mark Search
Before making an application for registration, it is prudent to make an inspection of the already registered trade marks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
Step IV: Application for Trademark in specified Form TM –A
Requirements for Trademark Registration:
- Power of Attorney in the name of Trademark Owner authorising the Trademark Agent to file the application and all ancilliary matters related thereto.
- E-Mail Id and Contact Number of Applicant
- User Affidavit duly notarized and signed, if required.
- In case Small Enterprise/Company: MSME Certificate
- Individual Applicant: Identity Proof and Address Proof of the Owner (be it Adhaar card, PAN Card, Driving License or Voter Id)
- Proprietorship Firm/: Identity Proof and Address Proof of the Trademark Owner + Any Legarl Proof proving the existence of the Firm (like GST Certificate)
- Partnership Firm: Partnership Deed + Identity Proof and Address Proof of all the Partners.
- Body Corporate/ Company: Certificate of Incorporation + Certified copy of Resolution authorising the Director to sign Power of Attorney + Identity Proof and Address Proof of all the Directors.
Status of the Trademark Application
Once an Application is filed, the applicant gets an Application number via which he can check applied trademark status. One is required to check. Following are the different types of Status:-
Formality Check Pass / Fail: Once a Form is filed, it passes through all the basic formalities like the description of goods and services and other necessary documents required to be attached if some discrepancy is found at the initial level then Formality Check becomes fail.
Marked/Sent for examination: once formality check process is complete, the form is sent further for examination.
Objection: after application of trademark, if examiner finds any discrepancy, it may raise objection u/s 9 & 11 and require a reply to be satisfied that why the objection should not be raised.
Accepted & advertised: once the department accepts the Form TM-A and it does not have any inconsistency then the mark is advertised & accepted.
Opposition: After the advertisement, if anyone finds it similar to their registered mark, they may write an opposition application to examiner which leads to hearing.
Withdrawal: If an applicant withdraws the filed application, then status is showing as withdrawal.
Registered: Once the above said process is complete and examiner is completely satisfied, the status is registered.
Any person, who is proprietor of a trademark used or
proposed to be used by him, may apply in writing in prescribed manner for
registration. The application should contain the trademark, the goods/services,
name and address of applicant and agent (if any) with power of attorney, the
period of use of the mark. The application should be in English or Hindi.
The principle for trademark applied should not be
substantially altered affecting its identity. The changes are permissible if rules
detailed in the subordinate legislation.
Yes, a registered trademark or even a trademark with
a registration application is transferable. This calls such a transfer an
“Assignment.” Usually, an Assignment requires a written contract .
However, the total application processing time may be from 6
months to a year, or even longer. Most applications are processed completely in
slightly less than one year.
For a trademark
registration to remain valid, a declaration of Use must be filed within the
year before the end of every 10-year period after the date of registration.
There is no limit to the number of times a trademark can be renewed, as long as
use of the mark by its owner continues.
Every country has its own rules
and provisions regarding registration and regulation of trademarks and service
marks. Hence, the Indian registration of a trademark/service mark may not be
completely valid in foreign countries.
To avail complete monopoly over and certain unique representation
of your trademark/logo, you may register the same under the jurisdictional
Copyright Act also.
Yes, under trademark law, multi class trademark application is
filed in India.
A mark shall not be registered if-
a) The mark is likely to deceive the public
b) Mark is likely to hurt religion of any class of citizen
c) Its use is prohibited under Emblems and Names Act,1950
A trademark is an intellectual property
which is being assigned to a word or logo but on another hand, copyright
assures you the protection for your unique content such as books, music,
videos, songs or even software.