Know more about Trademark by Consult my tax
Posted: Jul 16, 2018
As per the Trade Marks Act, 1999; a Trademark is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging, and combination of colours.
A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combination.
Trademarks that are similar or identical to an existing registered trademark cannot be registered.
A Trademark cannot be applied for registration if it is offensive, generic, deceptive, not distinctive, contains specially protected emblems, etc.
The Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India has registered trademarks after verifying the application and documents.
The Trademark Law, 2002 suggests 45 Classes under which trademarks should be registered.
The Trademarks Registry is responsible for registration of trademarks in the country, to provide protection of the trademark of various goods and services and to prevent fraudulent use of the mark.
The major function of the registry is to register trademarks which qualify for registration based upon the Act and rules.
When a Trademark is applied for registration the owner can use the symbol ™ with the product or service.Types of Trademarks
The different types of trademarks that can be registered are:-
- Product Trademarks: Trademarks attached to identify the business’s products.
- Service Trademarks: These are used to identify the services of the entity. For instance, the trademark for network and broadcasting service. They help advertise the service provided.
- Collective Trademarks: These trademarks are registered in the name of groups or organizations. They help people associate members with the group during commercial activities.
- Certification Trademarks: These are certifying trademarks which help people judge the quality, material used, origin and other specific features of goods and services.
The process of registration of the trademarks is on the basis of ‘first to file’. Hence, it becomes important to file for registration soon.
The time taken by trademarks to get registered is 2-3 years if it is not being opposed by a third party.
Trademarks applications are handled by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications.
Branches for these offices are available in Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai. The application must be filled as per territorial jurisdiction.
To register a trademark in India the following steps must be followed:-
Select a trademark agent in India :
Proprietors are only allowed to file a trademark application if their place of business is in India. If this is not the case, the right holder must file a trademark application through an agent or attorney. The agent or attorney usually takes care of the trivialities such as searching, preparing, filing and prosecution of the trademarks.
Determination of the eligibility and availability of the trademarks :
The agent usually starts the registration process by determining whether the trademark is eligible for registration and conducting a clearance search to see if there is a similar mark in the office of the controller general.
Completing the application form and filing :
If the trademark agent has the power of attorney from the right holder he can complete and file the application form. The form will require details such as name and address of the proprietor, a description of the goods and services associated with the mark, whether the mark is in use and a copy of the mark.
The authority responsible for trademarks allows the owners to file the application form online, as well as making payments online, attaching the requisite documents and usage of the digital signature. Opposition and Renewal Forms can also be filed online, once the trademark is applied for registration. The owner requires to create a login- id and a password.
Here is the complete and detailed procedure to follow the filing process online.
Trademark E-Filing :[source]
Review by the trademarks office :
The trademark office reviews the application to see if it is complete and then allots the application a number. If the trademark is registered, this number becomes the registration number.
Preliminary approval and publication, show cause hearing or rejection of the application :
The trademark association determines if the application is barred from registration either on absolute or relative grounds for refusal as prescribed in the Trade Marks Act, 1999. After this, they issue an examination report within a period of one month. Depending on the examination report the registrar of the trademark determines whether the application must be accepted, rejected or put up for ‘show cause ‘ During a ‘show cause hearing’ subject to the facts an application might be rejected, accepted or accepted with certain limitations. If the application is rejected, the applicant can appeal at the Intellectual Property Appellate.
Within the term of three months publication in the Trademarks Journal, if not opposed by a third party, the trademark will proceed for registration and the trademark authority will proceed to give a registration certificate. Once the Trademark is registered the owner is allowed to use the symbol ®.Reasons to register a trademark
The Trademarks Act, 1999 revolves around the procedure for registration of trademarks based on the classes and types but has not stated it’s compulsion. However, a registered trademark creates an upper hand from complete ownership of the mark, preventing fraudulent actions by competitors to the creation of a strong legal case during infringement.
It also holds the below-mentioned privileges :
- Trademarks can be protected only if they are registered. It allows the owners to take action or sue for damages in case there is patent infringement.
- The registered trademarks are valid for a period of 10 years and even prior to its expiry renewal can be done easily by filing an application for trademark renewal.
- Registering the trademarks establishes a distinct identity for products or services. Thereby, preventing competitors from copying the mark.
- Trademarks that are registered creates trust, brand value, goodwill in the minds of the customers.
- The registered trademarks can be used as the basis for filing a trademark in foreign countries if required. Foreign establishments can register trademarks in India.
- An Intellectual property when registered creates an intangible asset that holds a right to be sold, franchised or contracted on a commercial basis.
- Identity and Business Proof
Passport, driver’s license, aadhar card, voter id card, ration card are the identity proof required for the owner of the trademarks or person authorized to file the trademarks application.
In case of the legal entity, incorporation certificate or partnership certificate is required.
- Form 48 and User Affidavit
If a person other than the owner of the trademarks are authorized to file the application for registration then form 48 should be duly filled and signed. And any claims made on the use of trademarks then the user affidavit shall be submitted.
Application made for one word does not need a Logo. Otherwise, logo shall be submitted in the black and white format containing the exact words mentioned in the application for the trademark.Form and Fees
To complete the application process adequate fees should be paid and this is mentioned by the Department of Intellectual Property in India. The link below shows the requisite forms and fees as per the class of Trademarks :
Trademarks Form and Fees :[source]Different Marks used in Form TM-A
- Word Mark: A Word mark consists of word and combination of words, numbers, and symbols in standard Form which can be distinctive. For Example IBM
- Device Mark: Device mark means logo or label or word or combination of words used with specific style or format or shape. For Example Google
- Colour Mark: Colour mark consists of a specific color or combination of colors to indicate the usage or origin of Goods or Services.
- Three Dimensional Mark: It is used the where the product has a particular shape and it is well indicated in the three-dimensional mark.
- Sound mark: A sound can be so distinctive to indicate something that’s why it becomes necessary to protect such a sound mark.
The registrar of the trademarks sends a notice to the Registered Owner of the trademarks to get the trademarks renewed before the expiration of Trademarks. In case the Registered Owner fails to renewwithin the time limit, the Trademarks can be renewed within further 6 months from expiration date after paying a late fee along with Renewal Charges if still the Registered Owner fails to renew then he gets extension of 6 more months in which he can restore the Trademarks by paying Restoration fees.Prior Registration
After the registration process is completed through various forms based on the nature of the trademarks, it is necessary to track the status of the trademark online using the application number assigned. It takes around a year or more to register a trademark completely under the authorization of Intellectual Property of India.
The following status shows the various stages of the trademark application :
New Application: This means that the application has been entered into the database of the trademarks registry.
Send to Vienna Codification: This status is applicable only to the non-text trademarks. If a trademark contains a logo, label or artwork, then it is assigned a numerical code. This numerical code is in accordance with the Vienna Codification.
Formalities Check Pass: This means that you have complied with all the procedural formalities. Procedural formalities mean filing the power of attorney, providing translation where any document is not in English/Hindi and so on. If you have properly completed all the procedural formalities then your trademarks status will reflect as formality check pass.
Formalities Check Fail: If some procedural formalities (as listed above) are incomplete or if you have not satisfactorily complied with them then your trademark application status will show as formalities check fail.
Send Back to EDP: EDP stands for Electronic Data Processing. In a trademark application, all the documents and data entry are digitized. Send Back to EDP means that there has been some error during data entry that needs to be rectified. This status does not require the applicant to take any steps.
Send to PRAS: Pre-registration amendment section reflects when you have filed an amendment prior to the registration of your trademarks. The amendment may be to the proprietor name, address or the like.
Marked for Exam: This signifies the beginning of the legal process. This status means that your application will be taken up by an Examiner in order to determine its registrability. The examiner will decide if your trademark qualifies for registration, according to the provisions of the Trademark Act.
Exam Report Issued/ Accepted: After the examiner conducts the examination, the exam report is issued. Accepted means that the examiner has not raised any objections and that your trademark will be published in the trademark journal, prior to registration.
Objected: The examiner can raise objections against the registration of your trademark; the trademark status will show as objected. If your trademark is objected then you must file a reply within one month from the date of receipt of the hard copy of the notice.
Abandoned: If you do not respond to the trademark registrar within the stipulated time, your trademark application will be abandoned.
Refused: If the examiner is not satisfied with the response then he can refuse the registration of your trademarks.
Advertised Before Accepted: This means that your trademark has been published in the trademarks journal. ‘Before Accepted’ means that your mark is published for allowing any third party to oppose your mark before acceptance of the mark.
Accepted and Advertised: This means that your trademark has been advertised in the trademarks journal. There are absolutely no changes that you need to make to the application.
Opposed: After the trademark is advertised in the trademark Journal a third-party has 4 months to oppose the published trademark. If there is a third-party opposition then the trademark application status will show as opposed.
Registered: Your trademark is registered under the trademarks registry.
Removed: A trademark can be removed from the Register of trademarks. This may be because of non-renewal of the trademarks.
Withdrawn: After you voluntarily withdraw your trademark application, and status will shows as withdrawn.
The status of the application for trademarks registration as well as registered trademarks can be tracked through this below-mentioned link known as e-register.
Trade Marks Registry: [source]
Hence, a registered trademark has the power of enhancing brand value and creating a strong customer base because of the ownership and authority of the trademark aligned with the products and services offered. Also, acts as a supporting pillar in easing the legal matters with its rights; when such claims occur due to improper usage of similar marks.