Procedure to Register a Trademark

Trademark is the symbol to represent the company or brand through Name, Word, Numbers, Images or Sound etc. It is a recognizable insignia to differentiate it legally from all other products of its kind. A trademark, however, must not be confusing with any existing trademark specially if the products or services of both the trademarks are related.

A trademark can be registered for existing or proposed to be used mark. Any person, natural or legal, may apply for a trademark. In case of companies or any person having separate legal entity, the trademark shall be registered in the name of said company.

STEP 1:

TRADEMARK SEARCH: Large number of trademarks are getting registered every year in India and due to this, possibility may arise where two distinct businesses have same or similar trademark. To avoid problems like this, trademarks search is conducted before applying for registration. It can be done online or offline. This is to make sure that no trademark has been registered with same name or symbol etc. If in case someone else has already registered that trademark, then the applicant may have to make few changes so as not to infringe the registered mark it would be rejected.

It is advisable to conduct the trademark search through a legal practitioner or registered agents to minimize the chances of objection in the application and also to avoid possible violation of someone else’s trademark.

STEP 2:

CLASS SELECTION: A business or person intending to register a trademark must know that in how many classes his business falls into, and separate application must be filed for each class.

Goods and services have been classified into 45 different classes as per “the International Classification of goods and services” (NICE classification) published by the World Intellectual Property Rights). And a business whose area of operation, whether in goods or services extends in more than one class must apply for registration of trademark in each class separately.

STEP 3:

Next step towards registration of a trademark is to fill the application form for registration as provided in Second Schedule of Trademark Rules, 2017.

Details to be filled in the form:

1. Nature of the Application: Firstly, the applicant is required to mention the nature of his application. In case of Standard TM, Form TM-A is required to be submitted while in cases of Collective Mark or Certification Mark, Form TM-M is submitted.

Collective Mark: A collective mark is a trademark used by the members of a collective like any association or organization to indicate membership in the group or to identify and distinguish the products and services of members from those of the non-members. Collective trademarks show the source of the products and services sold by the members of the collective and distinguish the products from the competitors.

Certification Mark: This mark is used in the course of trade to certify that the product meets the standards prescribed by the any organization with national accreditation.

Examples of certification mark:

1. Agmark, for agricultural produce.
2. Hallmark, to certify the purity of gold jewelry.
3. ISI mark to certify industrial products that they met the standards set by the Bureau of Indian Standards.

• Next requirement is to furnish the details of the applicant, whether it is an individual, company or any partnership. In case of a legal person, incorporation certificate shall be attached with the application.

Fee is different for individuals, startups, and companies.

Address of applicant’s principal place of business in India and the address for service shall be provided.

In case the applicant does not carry business in India, an address of service must be provided in India.

• Applicant’s Agent: Any person may himself apply for a Trademark registration but to ensure hassle free registration, proprietors prefer Advocate or through Trademark Agents registered under the Trademark Act, 1999.

• Mark & Category of Mark: Every application shall contain a clear and legible representation of the trademark which is intended to be registered shall be provided in size not exceeding 8cm x 8cm, and any one category of marks from the following must be chosen:

1. Word Mark: It includes words, letters, numerals, or anything written in standard character.
2. Device Mark: It includes any label, sticker, monogram, logo, or any geometrical figure other than wordmark.
3. Colour: When the distinctiveness claimed in the combination of colours with or without a device.
4. 3D Trademarks: It includes the shape or packaging of goods.
5. Sound.

After choosing the category of mark, description of it shall also be given. Where the mark is colour mark, description of colours and their alignment in the mark must be specified in the application. And in case of sound mark, sound clipping, and musical notes shall be submitted.

Language of the Mark: Where the mark which is to be registered is in a language other than Hindi or English, following requirements needs to be fulfilled:

1. Name of the language used in the mark shall be specified.
2. Transliteration meaning conversion of the mark in roman script shall be provided in the application.
3. Translation of the mark in English shall be provided.

• Class of Goods or Services and Description: Applicant is required to do prior research and determine that under what class his goods or services falls. Same has to be mentioned in the application for registration. Along with the class of goods or services, description of goods or services shall also be given to verify that right class has been chosen and trademark is not registered under any different irrelevant class.

• Statement as to use of Mark: While making an application for registration of mark, details regarding use of mark shall be given. Either it is already in use and registration of the mark already in use is sought, or the mark is proposed to be used and its use in goods or services has not been done yet.

Where it is claimed that the mark is already in use, an affidavit stating the same shall be furnished with the application with supporting documents that can verify the statements made in the affidavit. Also, date or year from when the mark is being used shall also be provided in the application and affidavit.

STEP 4:

Trademark Examination Report: Once the applicant has submitted the application, the registrar shall cause it to verified by the Trademark Officer and a trademark examination report shall be prepared and submitted by him to the registrar and will also be sent to the applicant. In the report, if no objection is raised by the trademark officer, the registrar shall cause the trademark to be published in the trademark journal. But if the objection is raised then, in such cases, the applicant shall submit his response to the objection within 30 days or may also request for hearing. If the registrar is satisfied with the response, he will publish the mark in the journal otherwise he will pass appropriate order.

Where no reply is filed within 30 days or the applicant does not appear on the date of hearing, the application shall be considered abandoned.   

The reply to the objection should contain:

• Relevant case laws and precedents related to the issue against which the objection has been raised.
• Supporting documents to prove and corroborate the statements made in the reply.

STEP 5:

Publication in the journal: After the application is accepted by the registrar, it shall be published in the trademark journal and an opportunity shall be given to the public to object the registration if it infringes their mark etc.

Such objection shall be raised within months, failure to which the mark shall be registered within 12 weeks.

Where any objection is raised through notice, registrar shall supply a copy of notice to the applicant and he will file a counterstatement with additional supporting documents. After the considering the statement sand evidences the registrar shall take appropriate decision and either allow the mark to be registered or reject the application.

Applicant will have the right to appeal before Intellectual Property Appellate Board if the application is rejected.

Conclusion

Trademark is a sign if reliability and goodwill in the age of cutthroat competition between the brands. It makes the brand to be recognized easily without any confusion. Once the application is filed and the application number is generated, the applicant may use the ™ with its logo and after it is finally registered, the applicant gets the right to use symbol ® with his logo. This symbolizes that this brand has been trademarked. Trademark once registered has the validity of 10 years and the mark holder may apply for its renewal before its expiry.