Trade mark search in India - Biswajit Sarkar

What is a Trademark?

A trademark is any word, name, symbol, or device, or any combination thereof, which is being used in the commerce to identify and distinguish the goods or service of one particular business house from those of the others and also indicates the origin of the goods or services.

Any use of the trademark without the permission of the owner amounts to infringement and the owner has right to take legal action against the infringer.

Once a trade mark is registered in India, the owner of trade mark enjoys an exclusive right of using the same in the trade. It is protected perpetually if it is renewed in every ten years.

When an application for trade mark registration in India is filed within class 1 to class 34, the subject trade mark can be denoted with the symbol TM until the registration is complete. Once registration is granted the symbol R should be used.

When the trade mark registration in India is filed within class 35 to class 45 the service mark can be denoted with the symbol SM and after registration it can be marked as R.

What can be registered as trade mark in India?

• Any Invented Word
• Any Device
• A Signature
• A Slogan
• A Jingle
• A Colour of distinctive nature.
• A Domain Name
• A Shape of a product

Who can apply for the trade mark registration in India?

1. An Individual/A Proprietor
2. Any Partnership Firm
3. Any Company (Indian or Foreign)
4. A Society/NGO

How to find the Classification of Goods or Services?

Trade Marks Registry, India follows the Nice Classification to identify the class for any particular goods or service. All goods are referred under Class 1 to Class 34 and services are categorized into 45 classes.

Choosing the right class for filing the trade mark application, the applicant should follow the list of goods or services referred in the Indian Trade Mark Rules.

How to conduct a Trade Mark Search in India?

The trade mark search can be initiated through an online data base which is maintained by the Indian Trade Marks Registry. There are three different types of trademark searches that can be initiated in India.

1. Word Mark Search – This search is initiated for similar representations of wordmarks. It allows for retrieving trademarks which use the same word as that of the query entered. For example- in order to perform this search, you must select the "wordmark" option from the drop-down menu in the search and insert the keywords of the proposed mark in the corresponding box "wordmark".

As has been discussed above, there are 45 classes for trademark registration. Next, a class has to be entered in the corresponding box named "Class". This class must be related to the services or product being trademarked. In India, you can perform trademark search using one class at a time.

Further, the wordmark search is performed by using the prefix method, "Starts With" wherein if you put the keyword all trademarks starting with the keyword will appear, "Contains" wherein all the trademarks containing the keyword will get displayed and lastly "Match With" wherein registered trademarks that match with the keyword entered are displayed.

1. Phonetic Search – The phonetic search interface searches for similar sounding trademark words. The trademark office website, however, provides no information in terms of how the system works at the backend. But this is a useful search type as it sometimes provides results having a different spelling but a similar sound. The method for search would be the same as the Word mark search but without the prefix method.
2. Vienna Code Search – Sometimes, a trademark application can also contain visual elements which may make it difficult to search for similar marks. India being a member of the Vienna convention also follows the international classification of the figurative elements in a trademark. Hence, this search helps in identifying similar device marks to the query entered. A 6 digit Vienna code needs to be entered corresponding to the box named "Vienna Code" and also select the relevant class. The result after the search would display all marks containing the device.

Conclusion

However, the above-mentioned methods are a thumbnail sketch about the trade mark search procedures in India. But it is to be remembered that unless the methods are followed in a professional manner, the serious legal issues or the complexities may occur at the time of trade mark registration in India. Thus, it is advisable to take professional assistance from a trade mark attorney or a trade mark lawyer to follow the procedure of trade mark search in India.

The firm Biswajit Sarkar was established in 1990 in Kolkata, India as an Intellectual Property Law Firm. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus