Trademark Registration

Trademark Registration Consultants in Bihar , Jharkhand, India,

What is a Trademark?

A Trademark generally refers to a “brand” or “logo”.
Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.

Use of TM, SM and ® symbols

‘TM’ stands for Trademark and ‘SM’ stands for Servicemark. The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.

The ® symbol, can be used only once the trademark is registered and the registration certificate is issued. Also, you may use the registration symbol only in connection with the goods and/or services in respect of which the trademark is registered.

The registration process is the same for both trademarks and servicemarks.

Trademark Services

MBSoffers a comprehensive range of trademark services which include:

* Trademark Search
* Opinion on registrability of trademark
* Filing and prosecuting trademark applications
* Responding to office actions
* Handling trademark opposition proceedings
* Dispute resolution and litigation
* Advice on validity of registrations
* Advice on infringement and passing off
* Issuing legal notice (cease and desist letters)
* Publishing caution notice
* Trademark watch and monitoring services
* Renewal of trademarks
* Trademark due diligence

* Drafting license agreements, franchisee agreements and assignment deeds

Before filling an application

Trademark Search

Before adopting a trademark, a trademark search is highly recommended, as this will give an indication of any existing trademarks which have been applied for/or registered in the Trademarks Registry.

MBS provides trademark search services in India, assisting clients in the selection of brand names and ascertaining whether any identical or similar trademarks are already existing in the records of the Trade Mark Registry.

The cost of conducting a trademark search is quite insignificant in comparison to the efforts and costs involved in rebranding due to infringement of others rights.

Therefore, a trademark availability search is highly advisable before huge amounts of money and time are invested in a trademark and the guidance of an experienced trademark attorney are extremely worthwhile.
In order to conduct a trademark search, kindly provide us with the following simple information:

 i) Trademark to be searched
ii) Goods/Services in respect of which the trademark is to be searched

The trademark search results are reported within 1 or 2 business days.

Classes of goods and services

Before filing a trademark application, it is necessary to identify the classes in which you wish to seek protection for your trademark.

An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use. All goods and services are divided into 45 classes.

The 9th edition of the NICE international classification system is followed in India.

The following list gives general information about the goods and services covered in each class.

Products

Class 1

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8

Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23

Yarns and threads, for textile use.

Class 24

Textiles and textile goods, not included in other classes; bed and table covers.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers’ articles; matches.

Products

Class 35

Advertising; business management; business administration; office functions.

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Building construction; repair; installation services.

Class 38

Telecommunications.

Class 39

Transport; packaging and storage of goods; travel arrangement.

Class 40

Treatment of materials.

Class 41

Education; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Selecting a good trademark

 

A trademark must be chosen carefully. If you are launching a product and adopting a new trademark, please bear in mind that the scope of legal protection you would obtain depends on the type of trademark chosen.

The most common mistake is to choose a word that is descriptive of the goods or services. People do this in the belief that the consumer will know straight away what the product is or the service rendered. The same result can easily be obtained by combining a distinctive and fanciful trademark with a word which indicates the goods or services. E.g. Kodak film.

Descriptive trademarks are difficult to register and enforce. Although it may be easier to market such products at inception, such trademarks are offered the least amount of protection and therefore, in the long term, it would be difficult to stop your competitors from using the same or similar trademarks.
A better strategy would be to adopt a coined word, which has no reference to the goods/services upon which it is used. E.g. Canon

Another option is to adopt an arbitrary word, which has no relevance to the goods/services upon which it is used. E.g. Apple computers; Lotus software

The more distinctive a trademark is, the broader will be the available scope of protection.

GUIDELINES TO BE FOLLOWED:

AVOID Superlative or Laudatory words E.g. Premium, Gold, Deluxe

AVOID Descriptive words E.g. Coffee shop for coffee bars; Cooler for Refrigerators

AVOID trademarks Confusing Similar to existing trademarks

AVOID words which have direct reference to the Character or Quality of the product/service. E.g. Best Choice, Easy Cook, Super

AVOID Common Personal Names or surnames. Such names are registrable only if it has acquired distinctiveness through advertisements and long use

Well known geographical names such as SWISS chocolates or U.S.A. pizza are also not registrable.
There are also other factors to be considered in the adoption of trademarks, which is beyond the scope of this text.

Requirements for filing a trademark application

1.The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.
2.If the applicant is a company, the country or state of incorporation.
3.A list of goods and/or services for which registration is required.
4.Soft copy of the trademark to be registered.
5.If the mark contains or consists of non-English words, a translation of those words into English is required.
6.If the application is to claim priority from an earlier filed convention application, details of that application is also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.
7.Date of first use of the trademark in India, if at all used
8.Power of attorney simply signed by the applicant (no legalization or notarization is required). For Indian clients, power of attorney to be executed in 100 Rs. stamp paper and signed by the applicant. The power of attorney is not required at the time of lodging the application and can be submitted later with no additional cost.

Trademark Registration Process

Upon filing of the application, the registry will issue us with an official receipt with the filing date and number allotted to the application.  The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.

If, following examination, the trade mark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue.

Trademark Registration is a tedious process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately and the priority starts from the date of application.

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.

Flow Chart for Trademark Registration in India

Time Frame (Working Days)

“Industrial
Process and procedure of trademark registration in India

International Trademark Registration

Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential and key market. A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are very high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.

1. Registering a trademark abroad renders the company an exclusive right to commercialize its products in those markets.

2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.

3. Registering a trademark abroad also provides the opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.

Thus, the benefits of international registration and protection of one’s trademark clearly outweigh the costs of such registration.

International Application under Madrid Protocol

India has joined the Madrid protocol with effect from 8th July 2013. The Madrid system for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several territories.

At present, there are 91 countries which are members of the Madrid protocol. The following link shows the members of the Madrid system:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India.

In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend based on the number of classes and countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour:

http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.

Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of international application.

If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in the respective country.

Advantages of filing an International Application under Madrid protocol

1. Lower costs compared to individual foreign filings
2. Managing renewals, change in address, change in ownership is easier and more cost-effective

3. Additional countries may be designated at a later stage

Salient features

1. Multi class applications are allowed in India. However, statutory filing fees will be applicable for each class.

2. Classification of goods and services is according to NICE classification (45 classes).

3. Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a ‘proposed to be used’ basis.

4. Power of attorney is required (if filed through an agent/attorney)

5. Applications are examined as to registrability and availability based on existence of prior filed applications. Once accepted, it is published in the Trademarks Journal and an opposition may be filed by a third party within 3 months (extendable by one month). If no opposition is filed, the registration certificate is issued thereafter.

6. A trademark may be subject to removal on the grounds of non-use, if it is not used for a continuous period of 5 years.

7. The registration is valid for 10 years from the date of application and can be subsequently renewed every 10 years by payment of renewal fees.

8. Priority can be claimed provided the application is filed within 6 months from the date of the filing in the convention country.

Frequently asked questions

1. What is a trademark?

A trademark is generally referred to as a “brand” or “logo”.
A trademark can be a word, symbol, logo, brand name, wrapper, packaging labels, tagline or a combination of these and are used by manufacturers or merchants or service providers to identify their own goods and/or services. It is used to distinguish the owners’ goods or services from those of its competitors and is something that will be distinctive of just one trader. Properly used and promoted, a Trademark may become the most valuable asset of a business.
Trademarks should not be confused with trade names. While trade names can also serve as trademarks, registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.

2. 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.

3. 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.

4. 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

5. 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.

6. 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.

7. 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.

8. Can I use the ® symbol?

You may use the ® (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.

9. 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.

10. 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”.

11. 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.

12. 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.

13. 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.

14. 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.

15. 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.

16. 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.

17. 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.

18. 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 of goods, etc. are dealt by PRAS Section. 

 

We are one of the leading Trade License, Labour License, Contractor License, Security Agency License, Trademark registration, Copyright Registration, Patent Registraton, Website designing company and EPF consultant, ESI consultant,  company registration consultant, tax consultants based at Bihar. If you want any help, please call us at +91-7050515253, +91-8540099000 or visit us at www.meeradgroup.in

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This article is written by: ACS Prince Kunal
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