Have you ever wondered why Apple is such a strong brand across the globe?
The answer is Trademark. Trademark is an intangible rights that gives a company or brand a distinct identity. It is a significant tool to protect business innovation. Trademarks have a huge value of money as compared to other protections combined. For instance, the brand value of IBM holds more value than all patents IBM owns and other physical assets.
In India, Trademark is under Section 2(1)(zb) of the Trademark Act, 1999. The Trademark Act, 1940 was enacted for the first time in India. The Act was replaced by the Trade and Merchandise Marks Act, 1958 and the Trade and Merchandise Marks Rules, 1959.
The Trademark Act, 1999 and Rules 2002 formation occurred in compliance with the Trade-Related Aspects of Intellectual Property Rights. The Trademark Act, 1999 later amended to Trade Marks (Amendment) Act, 2010. There are 45 classes of Trademark for goods and services.
The trademark filing procedure in India involves the following stages:
- Trademark Searching
- Trademark application filing
- Trademark examination
- Trademark publication in Trademark Journals
- Trademark Opposition
- Trademark registration
- Trademark renewal
To avoid squandering money and time, it is always advisable to conduct a trademark search.
Significance of preliminary search
- Determination of identical marks similar to the proposed mark existing in the Register. The mark checked for visual, phonetic, confusing, or deceptive similarities.
- To avoid objection from Registry, infringement, or opposition proceedings.
- To determine Mark’s strength.
Trademark search grouped into three categories:
- Word Search: To determine similar marks by the International Classification of Goods and Service. This is in accordance with International Classification of Goods and Services under the Nice classification.
- Device search: This includes marks such as logos, letters, shape, and so on. This is under the Vienne Codification. Vienne Codification has also referred to the International Classification of the Figurative Elements of Marks.
- Internet search: To determine the use of any similar unregistered mark by the third party.
Trademark application in India
The application for the registration of Trademark in India is made to the Registrar. This is as per Section 18 of the Trademark Act 1999. A single application can be used for registration for different classes.
The filing of a Trademark application in India as:
- Ordinary application: Form TM-A is for filing this application for a single class.
- Multi-class application: Form TM-A for filing more than one class of goods and services.
- Convention application: Convention country can apply in India within six months from the application date in the convention country. This is under Section 154 of the Trademark Act. Form TM-A for filing single or multiple classes of goods and services.
Filing of a Trademark application in India under:
- The Trademark Act,1999
- Trademark Rules, 2017
Any person or entity who claims on the propriety of a trademark or trademark agent can apply in India. The filing of a trademark application is under the appropriate Registry depending on the Jurisdiction. Indian applicants can file under the jurisdiction applicant’s business falls. In the case of Foreign applicants, filing is under the jurisdiction of the Applicant’s attorney.
Prerequisite for applying:
- Name, address, and nationality of the owner
- Party type
- Trademark to be applied for
- Language of the mark
- Translation of the trademark
- Class of goods and services
- Specification of goods and services
- User details of the trademark
- State of the jurisdiction of the trademark office
- Address of the service details
- Conditions or disclaimer with the mark.
- Associated trademark (if any)
- Priority details (for priority or conventional application)
Required documents for filing:
- Power of Attorney
- Certified copy of the priority application as filed in the conventional country
- Affidavit of use
A trademark registration process contains the following information
- Name and address of the owner
- Classification or Trademark class
- Trademark used since the date
- Description of goods and services
Trademark examination and objection
After applying, the examination process is carried out by the examiner. This is per the provisions of the Trademark Act 1999. If an objection occurred, an official examination report is issued within 3-6 months from the filing date.
Trademark objection reasons raised by the examiner:
- Relative Grounds: Section 11 of the Trademark Act 1999, the rejection occurs if:
- Identical to an earlier trademark for the same goods or services
- Identical to an earlier trademark in respect of different goods or services.
- Absolute Ground: Under section 9 of the Trademark Act 1999, the rejection occurs if:
- Devoid of any distinctive character
- Exclusively of the marks serving in the trade to designate quality, geographical origin.
Trademark Objection Reply
The reply to objection is an examination reply or response to the office action. This is filed within 30 days from the receipt of the trademark examination report. Falling to do so, will lead the application to be treated as abandoned by the trademark Registry. However, the period of 30 days can be extended on payment of a prescribed fee.
Trademark publication in Trademark Journals
After acceptance by the Registrar, the application becomes available in the Trademark Journals. The Registrar advertises the mark in the official TradeMark Journals. This will become available on the Registry’s website every Monday. And is open to the public for filing opposition applications. The opposition notice is filed within four months from the date of publication.
Trademark is registered for 10 years from the date of applying. Trademark is renewed for a period of another 10 years by the payment of renewal fee otherwise the mark is removed from the Register of Trademarks.
In conclusion, the process for trademark registration in India is quite simple. Contact us to protect your brand name and logo, today!