Trademark

The Trademark is important intellectual property right of every business entity. The trademark includes a brand, logo, label, tagline, ticket, name, signature or combination of colors and/or words which is used to distinguish the products and services of one party from those of others.

In India, Trademark is administered under Trademark Act, 1999 and also under common law remedy of Passing off. According to Section 2 (zb) of the Trade Marks Act, 1999, “trade mark means 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 the shape of goods, their packaging, and combination of colors.”

The core aim for the inception of trademark law is to protect the rights of the proprietor from unfair competition. Trade Marks Act, 1999 contains appointment of registrar, condition of registrations, classification of goods and services, the grounds for refusal of trademarks, procedure and duration of registration, renewal of trademarks, effects of registration, trademark infringement, assignment and transmission of trademark, rectification and correction of register, certification trademark, collective trademarks, opposition process, establishment of IPAB, penalties etc.

Generic mark, descriptive marks, suggestive marks, arbitrary marks, fanciful marks are the important types of trademarks based on their strength and capacity of registration. Trademark search is an important process of trademark registration which enables us to identify whether the same or similar mark has been already filed with the trademark register or not. Registration of Trademark is important for the new business entity which facilitates them to protect the business name by filing the civil suit or criminal action against the party who is infringing their trademark rights.

Recently, in 2017, Indian Government has amended Trademark Rules by passing Trade Mark Rules, 2017 and thereby changed process & documentation regarding trademark registration. Because of an amendment to Trade Marks Rules, 2017, the process of registration is going to be speedy and simple. Online trademark filings will get 10% discount on certain statutory fees. Most of the communication shall be carried out through e-mail communication to reduce the use of papers as an eco-friendly movement. To download Trademark Rules, 2017 click on http://dipp.nic.in/sites/default/files/trademark_amendment_rule_2017.pdf

TRADEMARK REGISTRATION PROCESS:-

  1. Process in short:-

Trademark search -Trademark filing – Examination Report with objections if any-Hearing if any-Opposition if any- Registration-Renewal

 

  1. Trademark Search:-Before going ahead for trademark filing for registration, Trademark search is the first process to begin with. Trademark search will enable us to find if any, same or similar mark and/or logo already filed or registered with Indian trademark office or not. After Trademark search, we can anticipate the chances of our Trademark registration. It is better to involve practicing Intellectual Property Lawyer/Attorney for the purpose of proper advice relating to trademark search results and anticipation of ability of registration of trademark so that chances of objection from the registry and opposition from third parties can be reduced.

 

  1. Date of first use:- In case, if you already started using mark in the market then actual dateof first use shall be provided based on Invoices, Bills, Business Contracts, Government certification or registrations, Business proposals, Mail exchange of Proposals or Bills etc. or mark may be filed as a “proposed to be used” if you want to use it in future.

 

  1. Trademark Class:- The trademark shall be filed under the specific class in which your company/firm is dealing. As per Trade Marks Rules, 2017 there are total 45 Classes divided based on goods and services description. It is suggestible to take expert lawyer’s advice to evaluate proper trademark class. To check the trademark classification click on http://euipo.europa.eu/ec2/

 

  1. Territorial Jurisdiction Offices:- Trademark registry has five divisional offices according to group of states i.e. Mumbai, New Delhi, Kolkata, Chennai and Ahmadabad. To check the jurisdictions click on http://www.ipindia.nic.in/locations-and-jurisdiction.htm

 

  1. Trademark fees:-
  • Trademark search –As per concerned Lawyer’s charges which is not fixed. Some lawyer/attorney’s are giving free advice on trademark search.
  • Professional fee for preparation and filing of TM Application – As per concerned Lawyer’s charges which is not fixed. Trademark has filing, objection and opposition stage. Filing stage is simple but to overcome objections from Registrar or opposition from third parties, one will required involvement of good lawyer/trademark attorney or authorised Trademark Agent. Filing done from unauthorized sources can leads to improper handling of trademark filing process. It leads to abandoned or refusal of trademark. Lawyers who are registered in the Trademark Registry department can only handle the process of registration. The Registry issue Attorney Code to such lawyers. One who is not a lawyer but has knowledge and experience in the field of trademark law can appear trademark agent exam which is periodically organized from the end of trademark registry.
  • Government/Statutory fee for Trademark filing – INR4500/- per mark per class for Individual/Registered Start ups/Registered Small entities or INR9000/- per mark per class for others.

 

  1. Required Documents:-
  • Power of Authorisation of an Agent/Attorney (Executed on INR100/- stamp paper)
  • TM-A Application form
  • User Affidavit in case of User date (Notarised on INR100 Stamp Paper)
  • Documents relating to Small Enterprises (MSME/SME/SSI)
  • Documents relating to Start up entity (Registration under Start Up India Scheme)
  • Proofs relating to date of first use (Invoice, Bills, Advertising Proposal, Business Agreements & Contracts, Government Certificate of registrations etc. containing date & word used in the trademark)

 

  1. Documents required to avail discount in government/statutory fees for Partnership firm, LLP, Private Limited Company, Any Entity other than single firm.:-
  • Certificate of Registration received under Start Up India Scheme (startupindia.gov.in)
  • SME/SSI registration certificate for Small Scale Industries (MSME, SSI etc.)

 

  1. Objections & Opposition-

Trademark Objection is raised by Registrar after filing of the trademark before the registry whereas Opposition is raised by third parties within the period of publication (4 Months maximum) which commence once Registrar accept the trademark application and process it for publication. Objection can be raised under section 9 (Absolute ground of registration) or Section 11 (Relative ground of registration) under Trade Marks Act, 1999.

To check section 9 click on https://indiankanoon.org/doc/1158841/

To check section 11 click on https://indiankanoon.org/doc/1558275/

 

  1. Renewal

The registration of trademark is valid for 10 years from the date of application and should be renewed every 10 years of interval before the expiry date. The renewal application can be filed within 6 months before the expiry of trade mark. Registry grants a grace period for 6 months after expiry of trade mark during which the registration can be renewed by paying additional surcharge. If the trade mark registration is still not renewed during the 6 month grace period, the trade mark can be restored and renewed within 1 year after expiry by paying additional penalty. If trademark will not be renewed on time, it will be treated as “INVALID” and applicant has to file fresh application if he/she/they want protection over the same.

 

  1. Timeline:-
  • Search – 1-2 Working days.
  • Filing 1-2 working days. (you can start using symbol next to your mark).
  • Registration – 18 months (you can start using ® symbol next to you mark).

 

Once the trademark application is filed one can use TM symbol next to his mark and after receiving registration certificate one can use ® symbol next to his mark.

(Advocate Paresh P. Acharekar, Airoli)

+91 8898787995/ +91 8767537424