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TRADEMARK REGISTRATION IN INDIA
INTRODUCTION
Trade: the action of buying, selling and dealing in goods and services. Mark: any word, phrase, logo design, symbol, which is placed on an article offered for sale to public.
Trademark helps in identifying the products, services, other things etc., because it distinguished the goods and services of the proprietor. It is the way by which connection between public and manufacture is setup.
The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules thereunder.
The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trade mark for goods and services.
BENEFITS OF TRADEMARK REGISTRATION IN INDIA
It protects their business by the way of trademark.
It generates goodwill into market place.
With registered trademark we can stop others from using our trademarked business name / logo etc. with regards to goods/ services.
It creates a form of asset, as it can be sold, licensed or assigned.
It helps into the identification of the origin of goods and services.
It stimulates further purchase.
It creates loyalty and affiliation.
TRADEMARK SYMBOLS:
1. ‘TM’ Symbol: It can use with the brand name until your trademark is not registered and the application is in pending status.
2. ‘SM’ Symbol: It can use to identify and distinguishes the source of a service rather than a product until your trademark is not registered.
3. ‘R’ Symbol: It is only applicable for your brand when the mark is being registered and the Certificate of Registration is issued by the Trademark Registrar.
REQUIRED DOCUMENTS FOR TRADEMARK REGISTRATION
Copy of the logo
(In case logo is not provided, the trademark application can be filed for the word.) Signed Form-48.
Udyog Aadhar Registration Certificate.
Incorporation Certificate or Partnership Deed.
Identity Proof of Signatory on the behalf of Partnership / LLP / Company
Address Proof of Signatory on the behalf of Partnership / LLP / Company
In case of individual and sole proprietorship
Identity Proof of the individual or Proprietor.
Address Proof of the individual or Proprietor.
PROCEDURE FOR REGISTRATION OF TRADEMARK IN INDIA:
GROUNDS FOR REFUSAL OF REGISTRATION OF TRADEMARK:
1.) ABSOLUTE GROUNDS:
Common Or Non-Distinctive Trademark
• Not identical with other goods and services of different proprietor
• Mark, which designate kind, quality etc
• Words used in customary language
Trademark Related To Certain Shapes
• Cause confusion on large scale
• Contain scandalous matter
• Which can hurt religious sentiments
Trademark Contains Obscene Matter Confusing, Prohibited Trademark.
• Relate to nature of goods
• Give the technical results
• Provide substantial vaue
2.) RELATIVE GROUNDS:
Trademark cause or likely to cause confusion on small scale.
Trademark on dissimilar goods given to different proprietor and when registered proprietor claims that he has reputation in market in that field.
STEPS TO GET TRADEMARK REGISTRATION IN INDIA
1.What are the advantages of obtaining trademark registration?
Prima-facie evidence of ownership of the trademark.
Important asset for your business or company and contributes to the goodwill generated.
Gives you stronger enforceable rights to prevent others from using the trademark in connection with the goods or services for which it is registered.
Trademarks can be sold, licensed or assigned.
Registration usually covers the whole of India.
2.My Company Name is already registered under the Companies Act. Why should I go for trademark registration of my company name/trade name?
Registrations of Company Names, Business Names or Domain Names do not provide ownership or a monopoly right in a name as do trademark registrations.
3.How do I find out whether a trademark / brand name is already registered in India?
A search of the Indian Trademark Registry database will indicate whether there are any marks identical or deceptively similar to your trademark in India. The trademark search can be conducted in the official Trade Mark Registry website in India in the link copied below:
https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
4.What is the difference between trademark registration and copyright registration for logo?
A logo can be protected both under the Trade Marks Act and Copyrights Act.
Trademark Registration enables you to obtain protection for the brand name and also provides certain amount of protection to the manner in which the trademark is represented. However, if you need exclusivity for the representation of your trademark or logo, a copyright registration is strongly recommended. Copyright registration does not however offer any protection for the brand name.
5.What is the validity of a trademark registration?
Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.
6. How long does it take to register a trademark?
Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.
7. Can I use the 速 symbol?
You may use the 速 (Registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Kindly note that it is an offence, with penalty, to falsely claim that your trademark is registered. Till the registration is obtained, you can represent your trademark along with the letters TM to indicate that you claim rights over your trademark.
8. The status of my trademark application is "Send To Vienna Codification". What does it mean
It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website shows as "Send To Vienna Codification". As a part of the trademark registration process, any trademarks comprising figurative elements/logo is assigned a Vienna Code by the Indian Trade Mark Registry. This is one of the first steps taken by the Registry where the trademark comprises a figurative element/logo. The Vienna code is assigned based on the nature of the figurative element/logo. Such figurative elements/logos are codified according to the Vienna Agreement as per the link below:
http://www.wipo.int/classifications/nivilo/vienna/index.htm#
Vienna codification is done so that trademark searches can be conducted for artwork/logo. Once the Vienna codification is done, the status of trademark application is usually changed to Fomalities Chk Pass or Formalities Chk Fail.
9. The status of my trademark application is "Formalities Chk Pass". What does it mean?
It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website shows as Formalities Chk Pass. The Trade Mark Registry usually checks if the basic requirements are met such as: whether the POA has been uploaded (when filed through an agent) and whether appropriate translation/transliteration has been filed when the trademark is not in English/Hindi. When such basic requirements are not met, the status could be reflected as "Formalities Chk Fail".
10. The status of my trademark application is "Formalities Chk Fail". What does it mean?
It is one of the initial stages of the trademark registration process where the status in the Trade Mark Registry website is shown as Formalities Chk Fail. This could happen in instances such as non-filing of POA, non-filing of translation/transliteration when the trademark is not in English/Hindi, filing in wrong class, etc. The reason for the Formalities objection should be ascertained and appropriate action should be taken for the application to move forward for registration.
11. The status of my trademark application is "Marked for Exam". What does it mean?
The status shows as "Marked for Exam" when the trademark application has been assigned to an Examiner. The trademark would be examined as to its registrability under the various Sections of the Trade Marks Act. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued.
12. The status of my trademark application is "Exam Report Issued" / "Accepted". What does it mean?
The status "Exam Report Issued" or "Accepted" is used by the Trade Mark Registry to indicate that the trademark application has been ordered for publication in the Trade Marks Journal prior to registration. This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.
13.The status of my trademark application is "Objected". What does it mean?
The status is shown to be as "Objected" when the Examiner raises some objections regarding the registrability of the trademark. The examination report citing the objections can be viewed in the Trade Mark Registry website. In order to overcome the objections, a written response needs to be filed with the Trade Mark Registry within one month from the date of receipt of examination report, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.
14.The status of my trademark application is "Advertised before acc" or "Advertised" or "Accepted & Advertised". What does it mean?
The status is shown to be as "Advertised before acc" or "Advertised" or "Accepted & Advertised" when the trademark application is advertised/published in the Trade Marks Journal. This is one of the final stages in the trademark registration process. Once the trademark is published in the Trade Marks Journal, 4 months time is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4 month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.
15.The status of my trademark application is "Opposed". What does it mean?
The status is reflected as "Opposed" when a third party has filed an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. In order to contest the opposition, a counter statement should be filed within 2 months from the date of receipt of notice of opposition, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement.
16. The status of my trademark application is "Send Back to EDP". What does it mean?
When there are errors regarding data entry of applications which needs to be rectified, the application is sent to EDP Section and the status is shown as "Send Back to EDP". This could also happen in cases where the documents are not digitized properly. The status would remain as "Send back to EDP" till these issued are rectified by the EDP Section.
17.The status of my trademark application is "Send to PRAS". What does it mean?
PRAS refers to Pre-Registration Amendment Section. Any amendments which have been filed prior to registration such as amendment of proprietor details, address, specification
