A trademark is a visual symbol, which may be a word, name, device, label or numerals used by a business to distinguish it goods or services from other similar goods or services originating from a different business. A registered trademark is an intangible asset or intellectual property for a business and is used to protect the company’s investment in the brand or symbol. A trademark is registerable if it is distinctive for the goods and services you provide. Proposed trademarks that are similar or identical to an existing registered trademark cannot be registered. Also, trademarks are not registerable if it is offensive, generic, deceptive, not distinctive, contains specially protected emblems, etc.,
Trademarks in India are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks are registered under the Trademark Act, 1999 and provide the trademark owner the right to sue for damages when infringements of trademarks occur.
INFORMATION REQUIRED FOR THE DRAFTING OF TRADEMARK APPLICATION
■ Full name, Father’s Name, Business Name, Address and Nationality of the applicant/s;
■ Type of Ownership (Body Incorporate, Partnership Firm, Proprietorship Firm, Trust, Society etc.);
■ List of goods and or services;
■ Trademark Class as per International Classification of goods and services;
■ Date of first use of the mark in India, if any, or statement that the mark is proposed to be used in India;
■ Details of Convention Priority, priority application number, filing number and date of the first filed country (if any), the term of priority is (6) six months.
DOCUMENTS REQUIRED FOR THE FILING OF TRADEMARK APPLICATION
■ A Power of Attorney (neither notarization nor consular legalization required) to be executed by an individual or a representative of a corporation, on a Stamp Paper of Rs.100/- (One Hundred);
■ Soft copy of the Mark, Logo or Label to be registered (Preferably in JPEG, JPG or GIF file formats);
■ Certified copy of the application which is the basis of the Convention priority (if applicable) may be filed within (3) three months from the Indian filing date;
■ If a right of priority is to be claimed based on an application filed in a Convention country within the last (6) six months, the filing date and a certificate by the registering authority of that country.
PROCESS OF TRADEMARK REGISTRATION
1. Trademark search
Although it is not mandatory, but it is highly recommended to conduct a trademark search before filing for a trademark registration application to ensure that there is not a prior existing mark similar to yours that could prevent your mark obtaining registration. It is also useful for you to know whether there are similar marks in the marketplace.
2. Drafting and Filing of Trademark Registration Application
Once the relevant searches have been conducted with the results showing the mark is not too similar to a previously existing mark, then a trademark application is filed with Trade Marks Registry India.
At this stage it is necessary to define the goods and services for which trademark protection is sought. This should be as broad as possible (but not so broad as to be meaningless) as you are endowed protection from a potential infringer only for the goods and services covered by the application. It should include even future uses of the mark.
Government fees for filing single trademark registration application is Rs.3,500/-
3. Examination Report
Trade Marks Registry will then examine the mark to ensure it meets the requirements for registrability in India. Examination currently occurs around 8-10 months after filing the application, however it is possible to request an expedited examination by paying extra government fees.
4. Respond to objections, if any
Objections arising from examination are common. They can often be overcome by:
submitting legal arguments as to why the mark should indeed be registered; or
providing evidence that the mark has been in use for a sufficient time; or
altering the goods/services of the trade mark specification.
5. Acceptance before Registration
If there are no objections from Trade Marks Registry, or they are overcome, then a notice of acceptance will issue. The acceptance and details of the mark will be published shortly thereafter in the Trade Marks Journal, and once published, there is a four months period in which other parties can formally oppose the registration of the mark.
If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue. Once registered a trademark will be valid for 10 years thereafter it can be renewed for another 10 years upon paying the government fees.